Global Aspects of Intellectual Property Law notes

Cheat Sheet

Week 1: Globalisation of Intellectual Property (IP)

1. DEFINITIONS (Core Concepts)
- 1.1 Globalisation (Friedman; Ampuja)
  - Friedman (1999): Integration of markets, states, technologies at unprecedented speed → empowers individuals/corporations → backlash from those harmed.
  - Ampuja (2015): Globalisation = new theory for new social forms beyond nation-state boundaries; cross-border flows reshape taxation, governance, IP enforcement.
- 1.2 Three Forms of Globalisation (Braithwaite & Drahos)
  - Firms — MNC expansion; supply chains.
  - Markets — seamless cross-border trade; platform economies.
  - Regulation — standards, treaties, harmonisation across borders.
- 1.3 Regulatory Globalisation
  - Process where states + corporations + NGOs + individuals use mechanisms (coercion, reward, modelling, coordination, capacity-building) to shape global norms.
- 1.4 Sovereignty
  - State’s authority over internal laws. Challenged by:
    - Harmonisation (e.g., TRIPS).
    - Regional blocs (EU).
    - MNC influence.
- 1.5 National Treatment
  - Foreign and domestic rights-holders must be treated equally (Berne, Paris, TRIPS Art 3).
- 1.6 Reciprocity
  - Earlier model (pre-multilateral treaties): “we protect yours if you protect ours.”
  - Replaced by national treatment in modern conventions.
- 1.7 Most Favoured Nation (MFN)
  - Under WTO: cannot discriminate between trading partners (TRIPS Art 4).
  - Exception: FTAs/RTAs may grant preferential treatment.
- 1.8 Harmonisation
  - Adoption of minimum/common IP standards across nations (TRIPS = baseline).
- 1.9 Common Heritage of Mankind
  - Knowledge/resources belonging to all; relevant for genetic resources, traditional knowledge, biodiversity.
- 1.10 Forum Shifting / Forum Shopping
  - States selecting the most favourable venue (WTO, WIPO, regional FTAs, ACTA) to shape/enforce IP norms.
1. GLOBALISATION AND IP — KEY THEMES
- 2.1 Why IP Globalises
  - IP rights create monopolies → need harmonised rules across borders.
  - Cross-border business = demand for predictable, uniform protection.
  - Multinationals push standards to protect R&D-intensive assets (US/EU/Japan).
- 2.2 Power Asymmetry
  - MNCs often have economies larger than states → influence domestic regulation.
  - Strong states (US/EU) impose IP conditions through trade leverage.
- 2.3 Cultural Backlash
  - Some cultures value copying/emulation as respect.
  - Harmonisation seen as Western IP ideology → resistance, especially developing nations.
1. INFRASTRUCTURE OF GLOBAL IP REGULATION
- 3.1 Principles
  - Sovereignty vs Harmonisation
  - National Treatment, MFN
  - Free Flow of Information
  - Strategic Trade (IP used for comparative advantage)
  - Continuous Improvement (upward ratcheting of IP standards)
- 3.2 Historical Trajectory
  - 19th Century: bilateral → multilateral (Berne 1886; Paris 1883).
  - Post-WW2: Bretton Woods → WIPO → GATT → WTO → TRIPS (1995).
  - Modern: TRIPS-plus FTAs; ACTA; TPP-11; AANZFTA; EU mega-agreements.
1. INSTITUTIONS & LEGAL INSTRUMENTS
- 4.1 Key Institutions
  - WTO — TRIPS; dispute settlement.
  - WIPO — treaties, registrations, classification systems.
  - UN Agencies — UNESCO, UNEP, UNCTAD.
  - UPOV — plant varieties.
  - National/Regional Bodies — EU IP frameworks; Andean Community.
1. INTERNATIONAL IP INSTRUMENTS (By Function)
- 5.1 Protection Treaties (WIPO-administered)
  - Berne Convention (Copyright) — national treatment; automatic protection.
  - Paris Convention (Industrial Property) — patents, trademarks; priority rights.
  - WCT / WPPT — digital copyright; anti-circumvention.
  - Rome Convention — performers, phonograms, broadcasters.
  - Phonograms Convention — anti-duplication.
  - Trademark Law Treaty / Patent Law Treaty — procedural harmonisation.
- 5.2 Global Protection Agreements
  - Madrid Agreement/Protocol — international trademark registration.
  - Hague Agreement — international designs.
  - Lisbon Agreement — appellations of origin.
  - PCT — unified patent filing system.
  - Budapest Treaty — microorganism deposits for patents.
- 5.3 Classification Agreements
  - Nice (goods and services),
  - Locarno (industrial designs),
  - Strasbourg (patents),
  - Vienna (figurative marks).
- 5.4 WTO – TRIPS Agreement
  - Minimum standards for copyright, trademarks, GIs, designs, patents, layout-designs, trade secrets.
  - Enforces Berne (minus moral rights) and Paris obligations.
  - Adds TRIPS-plus enforcement (border, civil, criminal).
  - Robust dispute resolution via WTO panels/Appellate Body.
1. BILATERALISM, MULTILATERALISM & PLURILATERALISM
- 6.1 Bilateralism
  - Strong states impose “TRIPS-plus” obligations (e.g., US FTAs).
  - Allows targeted leverage: IP chapters tied to market access.
- 6.2 Multilateralism (WTO/TRIPS)
  - Upside: Systemic fairness; weaker states form blocs; predictable rules.
  - Downside: US/EU still bypass via FTAs; slow negotiations; power imbalances.
- 6.3 Plurilateralism (ACTA, TPP-11)
  - Small group of “like-minded” states → faster results.
  - Criticism (Peter Yu): undermines multilateralism; fragments global IP regime.
1. ENFORCEMENT AND GEOPOLITICS
- 7.1 USTR Section 301 Investigations
  - Tool allowing the US to:
    - Identify IP “offenders”
    - Impose sanctions
    - Pressure states into bilateral deals with TRIPS-plus standards.
  - Motivations shift:
    - 2015: piracy, trade secrets, market access barriers.
    - 2021: economic nationalism (“protect American workers”), online piracy, criminal enforcement.
- 7.2 Outcomes of 301 Actions
  - Bilateral agreements
  - Sanctions
  - TRIPS-plus commitments
  - Ongoing monitoring
1. REGIONAL & TRADE AGREEMENTS (IP Chapters)
- 8.1 China–Australia FTA (ChAFTA)
  - Key issues:
    - Border measures (China: stopping exports of counterfeits)
    - Delays in IP examination
    - Transparency of registers
    - Infringement handling (separate tribunals → delays)
- 8.2 Trans-Pacific Partnership (TPP-11)
  - Comprehensive IP chapter (copyright → patents → GIs → trade secrets → enforcement)
  - Objective (Art 18.2): innovation, dissemination, social/economic welfare, balance of rights/obligations.
- 8.3 ASEAN–Australia–NZ FTA (AANZFTA)
  - Comprehensive IP chapter; cooperation + standards.
- 8.4 Andean Community
  - Regional IP framework: industrial property, plant varieties, genetic resources.
- 8.5 ACTA (Anti-Counterfeiting Trade Agreement)
  - Purpose:
    - Combat counterfeit/pirate goods and digital infringement.
    - Stronger cross-border enforcement.
  - Criticisms:
    - Over-reach into digital environment.
    - Impact on access to knowledge.
    - Led to Recommendation 8 → Australia should not ratify until reforms/clarifications.
1. IMPACTS OF GLOBAL IP STANDARDS
- 9.1 Benefits
  - Foreign Direct Investment (FDI) attraction
  - Innovation incentives
  - Market access (US/EU/Japan)
  - Legal certainty for MNCs
  - Technology transfer (theoretically)
- 9.2 Costs / Harms
  - Higher prices for protected technologies
  - Reduced diffusion of knowledge
  - Short-term trade losses
  - Disadvantage to developing states
  - Enforcement burdens
  - TRIPS-plus “ratcheting up” of standards
1. PROBLEM QUESTION FLOWCHART — GLOBALISATION OF IP
- STEP 1 — Identify IP + Jurisdictions
  - What IP right? (Copyright / Patents / TM / GIs / Designs / Trade secrets / Plant varieties)
  - Which countries? Developed vs developing? Cross-border conduct?
  - Note presence of MNCs.
- STEP 2 — Classify the Globalisation Type(s)
  - Tick all that apply:
    - Firms (MNC behaviour; tech transfer; supply chain
    - Markets (cross-border trade; digital sales; streaming)
    - Regulation (treaties; FTAs; TRIPS; ACTA; TPP-11)
  - If regulation flagged → proceed.
- STEP 3 — Identify the Governing Instrument(s)
- 3A — Multilateral
  - WTO member? → TRIPS applies (minimum standards; dispute settlement).
  - WIPO treaties? (Berne / Paris / PCT / UPOV / WCT / WPPT).
- 3B — Regional / Plurilateral
  - EU / Andean / AANZFTA / TPP-11 / ACTA?
  - Note TRIPS-plus obligations.
- 3C — Bilateral
  - FTA with IP chapter? (e.g., AUS–US FTA, ChAFTA).
  - Look for extended terms, data exclusivity, enforcement upgrades.
- 3D — Unilateral pressure
  - USTR Special 301 monitoring, threats, sanctions.
- STEP 4 — Identify the Mechanism of Regulatory Globalisati (Braithwaite & Drahos categories)
  - Economic coercion: “strengthen IP or lose market access
  - Reward / capacity building: FDI, tech assistance, office support.
  - Modelling / policy diffusion: WIPO treaties; EU exporting norms.
  - Reciprocal adjustment / coordination: regional harmonised regimes (Andean).
  - Forum shifting: bypass WTO → FTAs / ACTA / TPP.
- STEP 5 — Apply the Principles Tests
  - 5A — Sovereignty
    - Does the instrument constrain domestic IP policymaking? (TRIPS-plus; narrow flexibilities).
  - 5B — National Treatment (Berne/Paris/TRIPS)
    - Are foreign and local rights-holders treated equally?
  - 5C — MFN (TRIPS Art 4)
    - Is one country given preferential IP treatment over others without valid FTA carve-out?
  - 5D — Free Flow vs IP Protection
    - Does strengthened IP hinder tech transfer/access (esp. medicines, seeds, educational materials)?
  - 5E — Common Heritage / Traditional Knowledge
    - Does the regime privatise shared resources or cultural knowledge?
- STEP 6 — Impact Analysis
  - 6A — Short-term impacts
    - Higher tech/medicine prices
    - Restricted knowledge diffusion
    - Enforcement burdens / border measures
    - Trade retaliation risk (301)
  - 6B — Long-term impacts
    - FDI attraction vs dependency
    - Local innovation capacity
    - Industrial development or entrenchment of inequality
  - 6C — Distributional impacts
    - Winners: MNCs, developed states
    - Losers: consumers, developing states, small firms
- STEP 7 — Forum Shifting / Regime Complexity
  - Are stronger states using FTA → plurilateral → bilateral layers to ratchet norms?
  - Are developing states trapped in overlapping IP obligations?
- STEP 8 — Conclusion + Reform Optio
  - 8A — Legal conclusion
    - Relevant instruments + obligations + mechanisms
    - Breaches? (MFN, NT, TRIPS violations)
  - 8B — Normative/Policy options
    - Use TRIPS flexibilities (compulsory licences; transitions)
    - Resist TRIPS-plus where costs > benefits
    - Regional blocs to strengthen bargaining power
    - Domestic capacity building (R&D, IP offices, commercialisation)

Notes

Week 1: Globalisation of Intellectual Property (IP)

Globalisation of Intellectual Property (IP)
- Freidman (1999), defines globalisation as
  - The inexorable integration of markets, nation-states and technologies to a degree never witnessed before – in a way that is enabling individuals, corporations, and nation-states to reach around the world farther, faster, deeper and cheaper than ever before and in a way that is also producing a powerful backlash from those brutalised or left behind by this new system.
- ‘Globalisation theory refers to a renewal of social theory, to a claim that we need a new theory for new times that explains how and why complex and geographically expanded social forms, qualitatively distinct from previous ones, have emerged.’ (Ampuja, 2015)
  - Globalisation not only describes changes but has developed into a theory of their causes and consequences.
- There are three distinct kinds of globalisation (see Braithwaite and Drahos):
  - Globalisation of firms
  - Globalisation of markets
  - Globalisation of regulation
- Regulatory globalisation is a process in which different types of actors use various mechanisms to push for or against principles. To understand this process, it is necessary to identify:
  - who the participants are
  - whether the participants are government organisations or governments per se
  - whether we’re talking about private individuals who are engaged in commerce or society as a whole
  - the motivation of each of these participants.
- Globalisation theory
  - ‘Globalisation theory refers to a renewal of social theory, to a claim that we need a new theory for new times that explains how and why complex and geographically expanded social forms, qualitatively distinct from previous ones, have emerged.’ (Ampuja, 2015
  - Globalisation not only describes changes but has developed into a theory of their causes and consequences.
  - An important point that Ampuja expands upon is that, ‘the logic of nation-states with their exclusive borders has given way to the logic of cross-border interaction and flows and that this completely transforms the way in which we should think about society and its change.’
  - This is important because it affects the ability for nations to tax transactions and their revenue in globalised and cross border transactions and interactions. How do we determine what the revenue stream is going to be in these circumstances? While nations may not want to inhibit the ability for cross border interaction, nations are losing out on tax revenue due to the practices of companies such as Amazon, which has a tax haven in the Bahamas. This debate has received prominence in Australia with concerns raised over the lack of tax paid by multinational corporations such as Apple or Google.
- The power of multinationals in a globalised society
  - Globalisation is characterised by the rise of the multinational corporation and multinational organisation and the potential erosion of a nation state’s sovereign power. Some multinational corporations have economies larger than nations which impacts on sovereign states’ ability to negotiate with these powerful multinationals. These multinational corporations may use various mechanisms to minimise their tax obligations.
Globalisation and regulation
- While much of the commentary on globalisation focuses on the business or economic impacts, the impact of globalisation is far more wide reaching. Holm & Sorensen (1995) discuss the ‘intensification of economic, political, social and cultural relations across borders’ and intellectual property provides a good example of this process.
- There are three distinct kinds of globalisation (see Braithwaite and Drahos):
  - Globalisation of firms
  - Globalisation of markets
  - Globalisation of regulation
- Regulation as a tool
  - Regulation is a tool deployed to deal with issues of monopolisation and competitive conduct that inevitably arise in markets. Intellectual property rights can create monopolies and therefore restrict competition between firms or within a market. However, regulation of intellectual property rights are restricted to a particular jurisdiction. For example, Australia has its own legislation dealing with patents, copyright and trade marks.
  - So what happens when you’re crossing borders? How does one protect one’s intellectual property from one country to next? This is where globalisation of regulation has increased and different forms of international law have developed.
- Globalisation of regulation
  - Regulatory globalisation is a process in which different types of actors use various mechanisms to push for or against principles. To understand this process, it is necessary to identify:
    - who the participants are
    - whether the participants are government organisations or governments per se
    - whether we’re talking about private individuals who are engaged in commerce or society as a whole
    - the motivation of each of these participants.
  - These are issues that come into play when trying to determine how regulation becomes globalised and what its purpose is. There are numerous mechanisms that may be used by participants to achieve their goals. For example, these may include military coercion, economic coercion, modelling, reciprocal adjustment, non-reciprocal coordination, systems of reward, and capacity-building.
  - These tools may sound like buzzwords. However, many of these mechanisms are happening around us today and we will see examples of how one country can coerce another country utilising intellectual property rights in that process. For example, consider the military conflicts that have occurred (and continue to occur) associated with access to oil or petroleum. Conflicts over access to land and resources generally have been an issue that has resulted in some form of military coercion. Economic coercion can be from the point of view of a stronger nation requiring a weaker nation to comply with a request by refusing to buy or sell goods.
  - In this context, intellectual property may be used as a bargaining chip. An example of this is the issue of bilateral arrangements between nations whereby nations will only engage in trade if laws are implemented to protect intellectual property. Countries such as the United States have made use of that tool on a very regular basis - in other words they say, meet our requirements for intellectual property rights or we won’t engage in trade with you.
  - Similarly you could also say that there are systems of reward in this method of ensuring intellectual property protection. Nations could argue they will then invest in other nations (in particular developing nations) and use their capital to invest and build capacity to support developing nations to become more industrialised. However this investment will be subject to the recipient nation implementing intellectual property protections to the satisfaction of the investing nation. Exporters of intellectual property rights may use this argument to justify this practice with nations that perhaps have been much more reliant upon their natural resources, where industrial development is critical to raise living standards.
- Infrastructure of global regulation
  - Below are principles that serve as the infrastructure of global regulation that we will be discussing in more detail throughout this module:
    - sovereignty, national treatment v harmonisation, national treatment, Most Favored Nation (MFN)
    - reciprocity v national treatment
    - free flow of information, common heritage of mankind, deregulation v harmonisation
    - sovereignty (personality and territoriality) v harmonisation
    - strategic trade, lowest-cost location v harmonisation, rule compliance, world’s best practice
    - continuous improvement.
  - Each nation is a sovereign nation and therefore should be able to determine what happens within its borders including the laws relating to intellectual property rights. The European Union (EU) is a classic example of where the sovereignty of the nation is perceived as impacted by the collective viewpoint of the EU. Concerns relating to the loss of sovereignty have led to the ‘Brexit’ vote in Great Britain. It’s a question of being able to balance a loss of sovereignty in relation to certain issues with the benefits associated with harmonisation or globalisation.
  - In intellectual property in particular the question of national treatment and reciprocal rights between nations led to a number of bilateral arrangements in the early to mid 1800s between various European nations. National treatment is the principle that foreign nationals and locals should be treated equally. For example, let’s say an author in one country is protected by copyright law in their country but that same author may not be protected in another country and consequently their books may well be infringed by publishers in the other country because the law doesn’t recognise the rights of the foreign national. To address the issues, countries entered into bilateral arrangements to provide for reciprocal rights and ensure that foreign and local nationals enjoy the same rights. Eventually, multilateral conventions came into existence at the end of the 19th century to enable the adoption of these rights across all members of those conventions. Can you name which conventions these are?
  - Related to this issue is the concept of Most Favoured Nation (MFN). Generally speaking, if you’re a member of the WTO, you cannot discriminate between nations. Therefore, nations must treat all nations equally when it comes to markets or barriers to entry. There are some exceptions to this requirement and nations may enter into free trade agreements that provide preferential treatment to nations in relation to particular goods or services.
  - The free flow of information is an important principle in globalisation as nations don’t want to stifle trade and knowledge sharing and possibly lose out on potential revenue as a result of global regulation.
  - The common heritage of mankind is the idea that certain knowledge or things are considered to be freely available for the benefit of all mankind and not owned by any one person. We’ll see later in this subject that the concept of ‘common heritage of mankind’ is an issue in relation to genetic resources and associated traditional knowledge and the Convention on Biological Diversity.
  - Deregulation and harmonisation is an issue in identifying common principles to be used by nations. You could argue from a national perspective that we all have patent laws. But when we apply those patent laws we might have a different scope of what is to be patented or not. These variations need to be harmonised in a global market to get a similar treatment from nation to nation and to provide certainty for both patentees and those parties seeking to use patented inventions. This is achieved through various mechanisms of international law and there is constant work in that space. The World Intellectual Property Organisation (WIPO) and the World Trade Organisation (WTO) are important organisations in this regard and there are a number of international treaties that provide for harmonisation.
- Globalisation and harmonisation
  - Through the mechanism of intellectual property recognition and protection standards, countries have the capacity to attract and invest capital. Where intellectual property rights are harmonised, nations can develop their industrial commercial base. The TRIPs agreement has entrenched the idea that IP rights and standards are necessary to free trade.
  - Long (2001) tells us that “globalisation is an inexorable force whose operational imperatives must be acceded to if a country wants to maintain any hope of developing its industrial and commercial base.”
- Cultural backlash and cultural divide
  - Not everyone is in agreement with the principles that intellectual property rights provides. There has been a rise in regionalism in response to the perceived erosion of domestic control over local policy as a consequence of international harmonisation.
  - Others ask: why should there be some form of proprietary right or exclusive rights associated with things that are basically intangible? Why isn’t access to knowledge free?
  - Some cultures believe that ideas are built on from previous generations and that in fact emulating and copying things is a means of actually showing respect.
  - So from that perspective, how do you encourage a nation to adopt a set of harmonised rules when their culture doesn’t actually accept this idea? And that has affected many nations that are in the developing category.
1.6 History of globalisation
- Global intellectual property rights have been deeply impacted by thean artwork representing englands ports free trade policies of the nineteenth century. During the nineteenth century, nations took the initiative to engage in bilateral arrangements to provide for reciprocal rights. Globalisation in this context was driven by the industrial revolution and improvements in transport and communication.
- After a period of high engagement from a free trade perspective between nations in the nineteenth century and early 1900s, there was an interruption to globalisation during the period covering the two World Wars and the Great Depression.
- Bretton Woods Conference
  - Renewed focus on globalisation and trade emerged following World War II and the outcomes of the Bretton Woods Conference are highly significant in post-war developments in globalisation. It was at the Bretton Woods Conference that nations re-engaged and looked at the question of trade barriers. The aim was to break down trade barriers resulting in greater economic interdependence. This was based on the principle that greater economic interdependence would prevent or limit future global conflict. The Bretton Woods Conference led to the establishment of:
    - the International Bank for Reconstruction and Development (the World Bank),
    - the International Monetary Fund (IMF)
    - the General Agreement on Tariffs and Trade (GATT) (after failed attempt at establishing the International Trade Organization (ITO)).
- Below is a rough timeline of the history of globalisation (from left to right).
  - The International Period
    - 19th Century, initially bilateral, then multilateral e.g. Berne Convention, Paris Convention
  - The Global Period
    - Post WW2, establishment of World Intellectual Property Organization (WIPO), increasing multilateral agreement.
  - Formation of WTO and TRIPS
    - Which becomes an important part of the harmonisation of IP as nations must adopt laws that meet TRIPS requirements to be a member of the WTO.
1.7 Globalisation and harmonisation
- Through the mechanism of intellectual property recognition and protection standards, countries have the capacity to attract and invest capital. Where intellectual property rights are harmonised, nations can develop their industrial commercial base. The TRIPs agreement has entrenched the idea that IP rights and standards are necessary to free trade.
- Long (2001) tells us that “globalisation is an inexorable force whose operational imperatives must be acceded to if a country wants to maintain any hope of developing its industrial and commercial base.”
- Cultural backlash and cultural divide
  - Not everyone is in agreement with the principles that intellectual property rights provides. There has been a rise in regionalism in response to the perceived erosion of domestic control over local policy as a consequence of international harmonisation.
  - Others ask: why should there be some form of proprietary right or exclusive rights associated with things that are basically intangible? Why isn’t access to knowledge free?
  - Some cultures believe that ideas are built on from previous generations and that in fact emulating and copying things is a means of actually showing respect.
  - So from that perspective, how do you encourage a nation to adopt a set of harmonised rules when their culture doesn’t actually accept this idea? And that has affected many nations that are in the developing category.
- Parallel for IPR harmonisation
  - There is a long historical relationship between intellectual property harmonisation and historical economic trade issues.
  - TRIPs is a key agreement under GATT/WTO. The preamble to the TRIPS Agreement reinforces the importance of intellectual property rights to international trade. The first paragraph of the Preamble states:
  - ‘Desiring to reduce distortions and impediments to international trade, and taking into account the need to promote effective and adequate protection of intellectual property rights, and to ensure that measures and procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade.’
  - TRIPs establishes an international philosophy of trade utilitarianism.
- Aim of harmonisation
  - Harmonisation aims to create a single, easily applied, predictable, international standard for protection and enforcement of IPR. It certainly makes life easier for multinationals who want to have access to world markets if the system is almost the same and there is standardisation across the globe.
  - This may be perceived as a branch of globalisation as it serves the forces of global market integration.
  - For example, say you are a patent attorney with a client who has a great invention to patent internationally. In a sovereign based process without globalisation harmonisation, you’d have to apply in every single country through their patent office separately - lots of replication and changes at the same time. Whereas through the process of harmonisation we have methodologies to reduce the impact of that.
- IPR harmonisation
  - The TRIPs Agreement acts as the cornerstone of current intellectual property rights harmonisation providing:
    - minimum standards for intellectual property rights
    - minimum standards for enforcement
    - dispute settlement mechanisms
Institutions of IP law
- The key institutions of global intellectual property are as follows:
  - United Nations bodies
  - World Intellectual Property Organisation
  - United Nations Educational, Scientific and Cultural Organisation
  - United Nations Environment Programme
  - United Nations Conference on Trade and Development
  - Non United Nations bodies
  - International Union for the Protection of New Varieties of Plants
  - World Trade Organisation
Benefits of WTO
- Benefits of WTO
  - Disputes Are Handled Constructively
  - Freer Trade Cuts Costs of Living
  - Trade Raises Incomes
  - WTO Helps Promote Peace
  - Trade Stimulates Economic Growth
  - WTO Encourages Good Government
  - Governments Are Shielded From Lobbying
WIPO-administered treaties
- As you read these treaties, note down their:
  - purpose
  - who is protected
  - Beneficiaries
- Be prepared to discuss below with other students
  - Berne Convention for the Protection of Literary and Artistic Works (signed 1886) 159
  - Paris Convention for the Protection of Industrial Property (1883) 169
  - Brussels Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite (1974) 26.
  - Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms (1971) 74
  - Madrid Agreement for the Repression of False and Deceptive Indications of Source on Goods (1891) 34
  - Nairobi Treaty on the Protection of the Olympic Symbol (1981) 43
  - Patent Law Treaty (PLT) (2000) 10
  - Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (1961) 79
  - Trademark Law Treaty (1994) 33
  - Treaty on Registration of Audio Visual Works (1989) 13
  - Washington Treaty on Intellectual Property in Respect of Integrated Circuits (1989) 0
  - WIPO Copyright Treaty (WCT) (1996) 51
  - WIPO Performances and Phonograms Treaty (WPPT) (1996) 49
- Global Protection Agreements
  - Hague Agreement Concerning the International Deposit of Industrial Designs (1934) 41
  - Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (1958) 23
  - Madrid Agreement Concerning the International Registration of Marks (1891) 56
  - Madrid Protocol (1989) 66
  - Patent Cooperation Treaty (PCT) (1970) 126
  - Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (1977) 60
- Classification Agreements
  - Locarno Agreement Establishing an International Classification for Industrial Designs (1968) 45
  - Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (1957) 75
  - Strasbourg Agreement Concerning the International Patent Classification (1971) 55
  - Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (1973) 20
- World Trade Organisation
  - Agreement on Trade-Related Aspects of Intellectual Property Right (Annex 1C to the Marrakesh Agreement Establishing the World Trade Organisation)
- UPOV
  - International Convention for the Protection of New Varieties of Plan
UN, human rights, and IP
- United Nations International Covenant on Economic, Social and Cultural Rights. as it relates to intellectual property.
- Article 15 of the ICESC states:
  - 1. The States Parties to the present Covenant recognize the right of everyone:
    - (a) To take part in cultural life;
    - (b) To enjoy the benefits of scientific progress and its applications;
    - (c) To benefit from the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author.
  - 1. The steps to be taken by the States Parties to the present Covenant to achieve the full realization of this right shall include those necessary for the conservation, the development and the diffusion of science and culture.
  - 1. The States Parties to the present Covenant undertake to respect the freedom indispensable for scientific research and creative activity.
  - 1. The States Parties to the present Covenant recognize the benefits to be derived from the encouragement and development of international contacts and co-operation in the scientific and cultural fields.
- Bilateralism vs multilateralism
  - The whole point of intellectual property right is to encourage the further dissemination of knowledge and, in the short term, provide incentives and reward to those producing intellectual property in return for their efforts. Now that’s a nice ideal, but often it is uncompetitive, in that intellectual property rights award a monopoly to the creator (even if it is time limited). Accordingly, there is a tension between intellectual property rights on the one hand, and competition and consumer law on the other.
  - We have seen a rise in bilateral and multilateral agreements that include provisions relating to intellectual property rights and the harmonisation of laws between the two countries involved. In a bilateral arrangement one party is often much more powerful than the other party and can use the prospects of trade arrangements to require the less powerful country to adopt stricter intellectual property laws. These bilateral agreements can proliferate rapidly if multiple countries negotiate with individual nations and create a complex maze of international relationships. As a result we have seen an increasing trend towards multilateral agreements where there are more than two countries in the process.
  - These negotiations are much more difficult and protracted because of the number of different nations involved each with competing agendas. Issues arise between groups with different levels of power, particularly between developed, developing and least developed nations due to a lack of economic parity.
  - Enter the World Trade Organisation (WTO). When the WTO is working well, it is a global mechanism that deals with issues arising from bilateralism and multilateralism so everyone plays by the same rules. You can imagine how difficult it would have been to formulate rules so that less powerful groups can assert themselves in a way not possible in the past.
  - At its best, the WTO enables smaller countries to band together and form a bloc and wield greater voting power. At its worst, the WTO could be accused of imposing standards on developing and least developed nations that reinforce the economic disparity between nations. Multilateralism and the WTO has thus had an impact on historically stronger countries who must think how they can retain or in some cases regain their power.
- United States of America bilateralism
  - The rise of the WTO and the multilateral TRIPs Agreement did not bring an end to the proliferation of US bilateral treaty arrangements. The purpose of TRIPs has been to try and instill a more standard framework for IP rights globally and ultimately it was hoped that this would then end the US preference for bilateral treaty making. Unfortunately this hasn’t been the case.
  - United States Trade Representative and Section 301 Investigations
    - Section 301 under the US Trade Act provides the USTR. (United States Trade Representative) with the power to respond to circumstances where it is perceived that there are unfair foreign trading practices.
    - The USTR monitors international trade activities including compliance with trade agreements and obtains information from various industries on infringements of intellectual property rights particularly cases of piracy (whether it be copyright material, infringement of patents or counterfeit products etc). This information is combined with the investigative powers of the USTR resulting in the USTR being able to put together a comprehensive report that is produced annually.
  - The 2015 USTR Special 301 Report .outlines the motivations behind conducting the annual review as follows:
    - This Report reflects the Administration’s continued resolve to encourage and maintain adequate and effective IPR protection and enforcement worldwide. The Report identifies a wide range of concerns, including: (a) the deterioration in IPR protection, enforcement, and market access for persons relying on IPR in a number of trading partners; (b) reported inadequacies in trade secret protection in China, India, and elsewhere, as well as an increasing incidence of trade secret misappropriation; (c) troubling “indigenous innovation” policies that may unfairly disadvantage U.S. rights holders in China; (d) the continuing challenges of online copyright piracy in countries such as Brazil, China, India, and Russia and trademark counterfeiting in China and elsewhere; (e) market access barriers, including nontransparent and discriminatory measures, that appear to impede access to products embodying IPR and measures that impede market access for U.S. entities that rely upon IPR protection; and (f) other ongoing, systemic IPR enforcement issues in many trading partners around the world. The Report serves a critical function by identifying opportunities and challenges facing U.S. innovative and creative industries in foreign markets and by promoting job creation, economic development, and many other benefits that effective IPR protection and enforcement support. The Report informs the public and our trading partners and can serve as a positive catalyst for change.
  - Consider the 2021 USTR Special 301 Report.. How do the following motivations differ from those in 2015?
    - This Report provides an opportunity to put a spotlight on foreign countriesand the laws, policies, and practices that fail to provide adequate and effective IP protection and enforcement for U.S. inventors, creators, brands, manufacturers, and service providers,which, in turn, harm American workers whose livelihoodsare tied toAmerica’s innovation-driven sectors. The Report identifies a wide range of concerns, including: (a) challenges with border and criminal enforcement against counterfeits, including in the online environment; (b) high levels of online and broadcast piracy, including through illicit streaming devices; (c) inadequacies in trade secret protection and enforcement in China, Russia, and elsewhere; (d) troubling “indigenous innovation” and forced technology transfer policies that may unfairly disadvantage U.S. right holders in markets abroad; and (e) other ongoing, systemic issues regarding IP protection and enforcement, as well as market access, in many trading partners around the world. Combatting such unfair trade policies will encourage domestic investment inthe United States, foster American innovation and creativity, and increase economic security for American workers and families.
    - Visit the Office of the United State Trade Representative. and study the reports and the way that they report certain nations being major or midway offenders etc. Different levels of blame (and therefore ongoing scrutiny) are placed upon countries depending on whether they are perceived by the USTR as abiding by the expectations of the US as to compliance with trade agreements and their activities in relation to intellectual property rights that belong to US nationals.
    - Often there will then be an active dialogue between the country and the US to work through the process of enforcing IP rights in that particular jurisdiction.
  - Result of 301 investigations
    - The result of 301 investigations has generally been the US pursuing :
      - a bilateral agreement with the target state, or
      - trade sanctions against the target state (which aren’t part of the TRIPS arrangement)
  - Alternatively the target state may pursue TRIPs-plus measures to avoid the consequences of being listed.
  - You might ask why would the US engage in a bilateral agreement? The bilateral agreement can be a sweetener to the target nation to engage in a better trade relationship with the US market but there will be an expectation of an Intellectual Property chapter in that agreement that often goes beyond the standards in the TRIPS agreement.
Multilateral agreements
- Trade-Related Aspects of Intellectual Property Rights (TRIPs)
  - The TRIPs Agreement sets out what is expected of all WTO members at a base level of IP infrastructure and norms for the main areas of intellectual property covered by the agreement: copyright and related rights; trade marks; geographical indications; designs; patents; circuit layouts; and confidential information.
  - The World Trade Organisation states the following on the TRIPS website. with regards to the minimum standards established under TRIPS:
    - In respect of each of the main areas of intellectual property covered by the TRIPS Agreement, the Agreement sets out the minimum standards of protection to be provided by each Member. Each of the main elements of protection is defined, namely the subject-matter to be protected, the rights to be conferred and permissible exceptions to those rights, and the minimum duration of protection. The Agreement sets these standards by requiring, first, that the substantive obligations of the main conventions of the WIPO, the Paris Convention for the Protection of Industrial Property (Paris Convention) and the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) in their most recent versions, must be complied with. With the exception of the provisions of the Berne Convention on moral rights, all the main substantive provisions of these conventions are incorporated by reference and thus become obligations under the TRIPS Agreement between TRIPS Member countries. The relevant provisions are to be found in Articles 2.1 and 9.1 of the TRIPS Agreement, which relate, respectively, to the Paris Convention and to the Berne Convention. Secondly, the TRIPS Agreement adds a substantial number of additional obligations on matters where the pre-existing conventions are silent or were seen as being inadequate. The TRIPS Agreement is thus sometimes referred to as a Berne and Paris-plus agreement.
  - In addition to the provisions implementing minimum standards for intellectual property rights, the TRIPS Agreement also introduces key enforcement .and dispute resolution provisions.
  - Many developing nations have had a difficult time introducing TRIPs level protections of IP rights. The TRIPs Agreement provided opportunities to developing nations to introduce the expected level of IP protections in stages as part of the process of becoming a member of the WTO. Other countries may potentially negotiate higher levels of protection of IP rights. That can result in an imbalance where nations may end up paying more for access to knowledge that is protected under IP rights than their neighbours that may not have that arrangement.
- What does this mean in practice?
  - The operation of the standards under TRIPS can be qualified or members can choose amongst standards or choose when to adopt standards. Some bilateral arrangements are particularly targeted towards particular industries which can be problematic for the US where there is a strong culture of R&D and innovation industry with long periods of time, research and development to achieve a result which is patentable and has efficacy.
  - To summarise:
    - WTO members have the option to implement more extensive protection than TRIPs confers
    - WTO members can qualify the operation of standards under TRIPs, or choose among standards, or choose when to adopt standards.
- Other forms of regionalism/multilateralism
  - A globe displaying the Andean community
    - The Andean Community (also known as the Andean Pact until 1996) is a customs union of South American countries of Bolivia, Colombia, Ecuador, and Peru, as this map shows. The Andean Community has implemented several treaties covering intellectual property rights including:
      - Decision No. 486 Establishing the Common Industrial Property Regime
      - Decision No. 345 Establishing the Common Regime on the Protection of the Rights of Breeders of New Plant Varieties
      - Decision No. 391 Establishing the Common Regime on Access to Genetic Resources
    - The European Union (EU) has also engaged in a variety of bilateral and IP investment A globe displaying the European Unionagreements as a bloc. This has resulted in much higher level intellectual property norms.
    - These countries have their own arrangements from a FTA perspective, particularly in regards to decisions to leave. Think of BREXIT. It will essentially be business as usual if the UK adopts the type of engagement that Norway has with that of the EU.
  - The Anti-Counterfeiting Trade Agreement (ACTA) addresses a growing trade in counterfeit and pirated products that affects many areas of our everyday life. Imitators benefit from others’ effort and can sometimes make cheaper products because they are in a nation which has much lower labour and capital costs. This trade harms individuals, companies and entire economies. The damage can range from physical harm to people who are exposed to substandard or dangerous fake products to significant commercial losses for businesses which have their ideas stolen.
- Globalisation of IP norms
  - Under multilateral agreements such as the TRIPs Agreement, minimum standards relating to IP protection have become entrenched. As discussed on the previous page, in addition to the minimum standards created for intellectual property rights, the TRIPs agreement covers two other key areas: Enforcement; and Dispute Settlement.
  - The WTO dispute resolution system doesn’t always work for all parties involved and, as a result, some parties engage in ‘forum shopping’ in an attempt to resolve disputes in a more favourable manner. There has been a proliferation of different arrangements since the WTO, many on a regional basis, some on a bilateral basis that provide mechanisms for enforcement and dispute resolution in relation to intellectual property rights.
  - These agreements have been achieved through a process of forum shifting. Forum shifting is the process of finding a new space in which to have arrangements put into operation, rather than using the WTO as a mechanism. Having a whole variety of bilateral arrangements means higher standards of intellectual property protection and enforcement are once again being imposed upon developing countries that have only just made it to the TRIPS level of protection.
- Impact of higher global IP standards
  - The implementation of higher global intellectual property standards may have significant impact on countries worldwide, in particular developing and least developed nations.
  - Negative impacts associated with higher global intellectual property standards include:
    - higher prices for technology under IPR protection
    - restrictions on the diffusion of technologies
    - trade losses in the short-term
  - With a strong enforcement system in place, appropriate licences are required which then leads to royalty payments for the use of that technology and the list goes on. Which groups within that society and developing country then have the capability to pay for access to that technology? Trade losses may occur because in the early stages some nations need more investment to kickstart homegrown industries to go beyond the current basic technologies used.
- So why accept this process?
  - The standard answer has been that minimum intellectual property standards are the price developing countries are required to pay in order to have access to lucrative markets such as the US, EU, Japan and other countries
  - Economists argue that if developing countries fail to engage with intellectual property rights they are less likely to attract the necessary Foreign Direct Investment (FDI) needed to develop further. But other issues than the cost of accessing technology also come into play: the market, population, and workforce of a nation, for example.
  - So is there a balance here? Does the gain equal the losses associated with higher IP standards? Food for thought.
Free Trade Agreements (FTAs) in Australia
- Australia has been very engaged in the process of negotiating FTAs and has recently entered into agreements with China, Japan, and Korea and is working on various others such as with the UK, EU and India. These negotiations are very complex and often take a very long time.
- Australia is in a very unusual situation. As a developed nation, which has historically relied upon its natural resources as an export market, we are a net importer of intellectual property, as you can see below.
- So why pursue FTAs?
  - There are many issues to consider. Exporting is not an easy task in a remote country; the time and the cost of transport of Australian products are factors, and so is the exchange rate. Australia is actually developing IP in agriculture, and plant breeders’ rights is an important area of technology for us. Take for example, drought resistant crops. Our agricultural industries are some of the most efficient in the world. That is our IP that we can benefit from.
  - Where we tend to stumble as a nation is the commercialisation side. Since the mid 1980s we’ve had various forms of government policy try and kick start our venture capital industries but none have been particularly successful in engaging Australian industry in being pro-actively innovative and producing new technologies for export - that is starting to change.
- Department of Foreign Affairs and Trade (DFAT) position
  - FTAs can:
    - deliver economic benefits to Australian industry (more quickly than might be possible through the WTO round)
    - tackle specific issues in more depth and often at a higher level of ambition than is possible in the WTO, for example on investment which is largely outside the WTO’s remit
    - be more comprehensive, covering trade in goods and services, investment, as well as other trade-related issues such as competition policy and intellectual property
    - help secure Australia’s competitiveness in key export markets
    - enhance Australia’s broader economic and foreign policy and strategic interests.
China-Australia FTA
- China is Australia’s largest trading partner and the issue of intellectual property is particularly important in this relationship as China is still the largest producer of pirated and counterfeit products worldwide (despite a decline in the past 10 years or so). The issue of counterfeiting in China is not straightforward one. For many centuries copies were not seen as counterfeits. Copying the master, so to speak, allowed for the proliferation of that master’s work. It is a cultural issue that China may tackle progressively as it develops this concept of ownership and copyright.
- The China Australia FTA (also referred to as ChAFTA) concluded on 17 June 2015 and focuses on operational improvements between the two countries. Some of the key issues include:
  - Border Controls: In Australia our laws are focused on border protection to prevent incoming infringed articles. China has the opposite problem. How to stop counterfeit products leaving the country? The China Australia FTA allowed for stronger border measures to enforce IP.
  - Delays: IP offices in China operate with very few staff and high volumes of patents by comparison to other national intellectual property offices such as the US Patents and Trademarks Office (USPTO). This makes it very difficult for example, when an Australian patent attorney prosecutes a patent in China due to the delays that occur as a result.
  - Transparency: The process of registration of intellectual property rights and the separation of powers is also an issue. Transparency and providing online access to all IP registers would help improve communication in cases in which an intellectual property right is to be refused. This assists understanding of the processes because often different nations take different approaches to registration.
  - Infringement actions: In Australia, infringement actions take place in the courts - the trial judge deals with both infringement and the counter-claim of revocation of the patent and these are dealt with simultaneously in the same case. Whereas in China, the norm is that the infringement action is put on hold, until such time as the tribunal in the patent office makes a decision one way or the other. So you can imagine the delays and the impact of delayed infringement unless some sort of injunction is put in place.
- To summarise, the aims of ChAFTA are to:
  - reaffirm commitment to TRIPS and the Doha Declaration which allows TRIPs members to circumvent patent rights through compulsory licences for access to essential medicines.
  - reassess border measures
  - cooperatively improve examination and registration procedures
  - provide transparency and improve communication in cases where an intellectual property right is to be refuse
- Key IP issues to consider when analysing ChAFTA
  - Can the agreement improve enforcement of Australian IP rights in China and raise the level of protection? What is the price to do so?
  - China-Australia Free Trade Agreement
Regional free trade developments
- Trans-Pacific Partnership Agreement
  - The Trans-Pacific Partnership Agreement was a free trade agreement negotiated by Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, the United States of America and Vietnam. The objective was to create a ‘a comprehensive regional agreement that promotes economic integration to liberalise trade and investment, bring economic growth and social benefits, create new opportunities for workers and businesses, contribute to raising living standards, benefit consumers, reduce poverty and promote sustainable growth’. (See Preamble)
  - While the TPP was signed by the parties on 4 February 2016, the United States of America has since pulled out of the agreement with then President Trump stating that the United States shall instead pursue bilateral trade agreements in order to better promote American interests. See Presidential Memorandum Regarding Withdrawal of the United States from the Trans-Pacific Partnership Negotiations and Agreement.
  - After the US pulled out, the agreement was renegotiated with some important changes and became known as the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (TPP-11).
  - The Intellectual Property Chapter of the TPP-11 (chapter 18) covers issues such as:
    - membership of international agreements (including Patent Cooperation Treaty, Paris Convention and Berne Convention)
    - national treatment
    - cooperation between countries
    - traditional knowledge
    - trade marks
    - domain names
    - country names
    - geographical indications
    - Patents
    - Designs
    - Copyright
    - trade secrets
    - enforcement
  - The objective of the agreement, in relation to intellectual property rights, is set out in article 18.2.
    - The promotion and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.
- ASEAN–Australia–New Zealand Free Trade Area (AANZFTA): Chapter 13 on IP
  - AANZFTA was signed 26 August 2014. It is Australia’s first multi-country FTA. It’s also the first time ASEAN has embarked on FTA negotiations covering all sectors including goods, services, investment and intellectual property simultaneously, and is the most comprehensive trade agreement that ASEAN has ever negotiated.
Anti-Counterfeiting Trade Agreement (ACTA)
- Why an Anti-Counterfeiting Trade Agreement?
  - Anti-counterfeiting is not just a matter of making sure your Chanel handbag is real or not. Is your headache tablet genuine or is it a copy which is going to cause harm? Likewise, is your electrical gadget made to the standard that we expect or is it going to electrocute you when you plug it in? Such incidents harm the trade mark owner even if it was a pirated product.
  - The range of goods being counterfeited – and passed off as genuine – now goes way beyond luxury goods and DVDs to include common household articles – everything from home appliances to toothpaste. Various fake products, including counterfeit medicines, potentially hazardous household items and spare parts for cars, buses and planes, pose a threat to health and safety.
  - The manufacture, distribution, and sale of these illegal goods is widespread, well-organised and on a commercial scale. Organised crime groups use them as a means of raising funds for their activities and this has been documented internationally by law enforcement agencies such as Interpol. It can be more lucrative than engaging in criminal activity such as narcotics because it is easier to distribute and sell counterfeit products and initially there’s no associated criminal sanctioning unless you can show that the infringement is on a commercial scale of copyright items and trademark items.
  - Counterfeiting and piracy occur across international boundaries, which makes detection and enforcement difficult. This prompted the 37 countries taking part in ACTA to develop an agreement that sets out common standards and helps strengthen international cooperation in dealing with this global problem.
  - Australia took part in the ACTA negotiations and signed ACTA because it is in Australia’s long-term interests to promote its innovative industries and trade in intellectual property (IP), and to protect Australian consumers from the potential harm posed by fake products.
- What is the purpose of ACTA?
  - Establish an international framework for countries taking part to more effectively combat counterfeiting and piracy.
  - Reflect agreement among the participating countries:
    - to take effective action against the trade in counterfeit and pirated goods; and
    - to cooperate in addressing the cross-border trade in counterfeit and pirated goods.
  - Address counterfeiting and piracy not just in the physical world but also in the digital environment, where they are growing problems.
  - For Australia, ACTA is to help ensure that Australia’s innovative industries enjoy an enhanced level of protection among signatory countries.
  - The measures set out for dealing with breaches of IP rights are said to be consistent with existing Australian law and build on standards developed in the WTO.
- Report 126 of Joint Standing Committee on Treaties (June 2012)
  - Australia has not ratified ACTA as yet. There was a concern about the impact it would have on society as a whole, particularly access to knowledge and creative intelligence, because it went beyond the physical environment to impact the entire digital environment.
  - There is also a question of how to define digital piracy. How far do we protect our copyright material? Australian law has used this concept of fair dealing which is a much broader more flexible concept, and is aimed at trying to distinguish between regular use of a personal nature compared to commercial use, which would be an outright infringement. We’ll talk more about digital convergence later in the subject.
  - Recommendation 8: That the Anti-Counterfeiting Trade Agreement not be ratified by Australia until the:
    - Joint Standing Committee on Treaties has received and considered the independent and transparent assessment of the economic and social benefits and costs of the Agreement referred to in Recommendation 2;
    - Australian Law Reform Commission has reported on its Inquiry into Copyright and the Digital Economy; and the
    - Australian Government has issued notices of clarification in relation to the terms of the Agreement as recommended in the other recommendations of this report.
Opposition to ACTA
- The Anti-Counterfeiting Trade Agreement (ACTA) is a plurilateral agreement for the purpose of establishing international standards on intellectual property rights enforcement.
- But there are many differing views about ACTA as in this video below.
  - https://youtu.be/N8Xg_C2YmG0
Plurilateralism
- What is plurilateralism?
- Plurilateralism is the idea of having several views and participants in developing international law.
- Interestingly, the Trans-Pacific Partnership (TPP) and its negotiations were kept secret. While a document or chapter may have been leaked every so often via outlets such as Wikileaks, the terms of the agreement were officially secret until negotiations were completed. The Australian Government Department of Foreign Affairs and Trade would consult with interested members in industry and other professions however there was no open public consultation.
- Compare that to the way in which the WTO or WIPO operates when negotiating an international IP instrument where it’s completely open, where minutes are taken from meetings, where all the different views of the different nations are put forward as separate documents.
- Advantages and disadvantages of plurilateralism
  - You could argue that growing plurilateralism is an acknowledgement that all parties around the table have something to contribute and that we must listen to these different contributions and find an agreed way forward. Certainly quite a number of different international instruments has been achieved in a relatively short space of time as a result of this.
  - However, Peter Yu points out that plurilateralism can destablise international trading systems by circumventing multilateral systems. For example, how does the TPP fit into the scheme of things when you have the WTO? Does it result in the alienation of other trading partners and complicate further multilateral discussions? ASEAN countries are also talking about a new agreement - how does that impact the TPP and vice versa?
  - To summarise:
    - Yu describes growing “plurilateralism” in the negotiation of ACTA, TPP
    - Disadvantages: destabilises international trading system by circumventing multilateral system; alienation of other trading partners; complicates further multilateral discussions
    - Advantages: achieves outcomes that could not be achieved otherwise, historically mini-negotiations paved the way for new agreements.

Week 2: History and theoretical development of Intellectual Property Rights (IPR)

History and theoretical development of Intellectual Property Rights (IPR)
- Theories of IP - theories about IP fall into three broad categories.
  - Personal theories
    - Natural rights theory
      - This theory is attributed to John Locke’s Labour Theory. That is, that man is entitled to ‘the fruits of his own labour’.
        
        ‘the labour of his body and the work of his hands we may say are properly his. Whatsoever, then, he removes out of the state that nature hath provided and left it in, he hath mixed his own labour with and joined to it something that is his own, and thereby makes it his property.’ John Locke, Second Treatise of Civil Government, Chapter V: Of Property, s 27.
    - Reward theory
      - Others have theorised that intellectual property rights is granted as a reward for a person’s creation or invention.
  - Economic theories
    - Incentive to invent theory
      - Intellectual property rights act as an incentive to achieve an end result, that is to drive invention or creation in society. While this may be similar to the reward theory (as discussed above), this theory focuses on intellectual property rights as an economic instrument.
    - Disclosure of information theory
      - Intellectual property rights can be seen as a mechanism to ensure disclosure of and sharing of knowledge and information. In this theory, IP rights act as an economic instrument to improve the knowledge base upon which society survives and thrives.
      - For example, patents ensure that inventors disclose their invention to the public in return for a limited monopoly. This disclosure encourages and forms the basis for future innovation. Contrast this with the example of trade secrets, where information could be maintained in confidence in perpetuity and not enter the public domain (e.g. the formula for Coca Cola or KFC’s secret herbs and spices).
  - Market–based theories
    - Prevention of unfair competition
      - IP can act as a mechanism to prevent companies from free-riding on the efforts and reputation of creators or inventors and passing off their products as the same. For example, consider a company that has spent a lot of time developing a brand and its marketplace reputation. If competitors can trade off their reputation by using similar colours or marks on their products, why invest company resources in the first place?
    - Consumer protection
      - Intellectual property rights can also act as a mechanism to assure consumers of quality. The company brand may also act as an indicator of quality and/or safety of the products.
- Economic aspects of IP
  - Knowledge as property
    - When we talk about property we are talking about the relationship between human beings or perhaps more accurately about the relationship between persons in relation to ‘things’ (Cohen, Dialogue on Private Property 1954.).
    - A question of exclusivity? Right to possess, use and dispose of the ‘thing’. Not absolute!
      - ‘The creator of new knowledge does not lose their knowledge if someone else takes it and uses it. If we are to view this new knowledge as a ‘good’ in economic terms then it would be classified as a non-rival good, because the taking of the new knowledge by another from its creator does not diminish the ability of the creator to use their new knowledge. This is also known as a public good. However, without the legal construct of intellectual property rights to protect the new knowledge the creator would not be able to recover their costs of producing the new knowledge, and hence there would not be any incentive to invest in research and development to create further new knowledge. This is referred to as market failure resulting in underproduction.’ (Natalie P. Stoianoff, Fred Chilton, Ann Monotti, Commercialisation of Intellectual Property, LexisNexis, Sydney 2019, 50.)
  - IP rights and the public domain
    - Information may enter the public domain in a number of ways including:
      - Information may never have been protectable under intellectual property rights in the first place.
      - Some information enters the public domain upon expiry of protection under intellectual property rights. For example, patent applications are required to disclose the details of the invention in a patent specification and only the patentee can exploit the invention during the term of a patent. When a patent expires the disclosure set out in the patent specification enters the public domain and is able to be exploited by anyone.
      - Information may also enter the public domain through conscious choice or as a result of failure to take necessary steps to ensure that information is not disclosed. For example, a researcher may choose to publish information about their research in a scientific journal and this may preclude obtaining intellectual property protection at a later date. This may be acceptable if the researcher (and the institution they work for) is making an active choice to release information into the public domain however there is an increasing trend in universities for researchers to be required to work with their commercialisation departments to ensure that they engage in an assessment process before publishing scientific results to determine whether intellectual property protection should be sought prior to publication.
  - Results of Economic Analysis
    - The impact of intellectual property rights from an economic perspective has been the subject of much consideration and analysis. Keith Maskus, a US economist focusing on intellectual property has conducted an analysis of the benefits of intellectual property. Maskus (2001) found that:
      - IPRs encourage growth more readily in economies that are open to international trade and investment
      - Foreign competition pushes domestic firms to invest in new technology and higher product quality
      - Firms in open economies are more likely to absorb the costs of technology transfer when returns to those investments are supported by IPRs
      - Open markets combined with stronger IPRs, and investments in physical and human capital operate jointly to raise productivity and economic growth
- Forms of IP
  - The remainder of this module will review the following forms of intellectual property in detail:
    - 1. Copyright
    - 1. Patents
    - 1. Trade marks
  - An excellent online resource that can supplement your readings on intellectual property is available at Wikijuris.
  - Other forms of intellectual property rights include:
    - Designs: Designs protection relates to the overall visual appearance of a product. Design law utilises a similar regime to Patents but is in many ways derivative of the subject matter of copyright
    - Circuit Layouts: Circuit layouts, such as computer or semiconductor chips, have sui generis legislation.
    - Plant Breeder’s Rights: Plant breeder’s rights offer protection for new varieties of plants. Plant breeder’s rights developed as another sui generis regime but again has similarities with patent law.
    - Confidential Information: On the common law front, the action for breach of confidence has had a long parallel history that is complementary to the efforts of patent law but much broader in subject matter than patent law. Provided information is kept confidential, protection may continue in perpetuity.
    - Passing Off: the tort of passing-off has developed under common law to protect business reputation - this is often used in conjunction with trade mark protection and with actions that allege a breach of s.52 of the Trade Practices Act 1974, now s.18 Australian Consumer Law.
- Copyright
  - What is Copyright?
    - According to the World Intellectual Property Organisation., copyright (or author’s right) is ‘a legal term used to describe the rights that creators have over their literary and artistic works. Works covered by copyright range from books, music, paintings, sculpture, and films, to computer programs, databases, advertisements, maps, and technical drawings.’
    - In the case of literary works, the property rights are in the published literary work itself (separate from the chattels of ink and paper). Rights in copyright are ground in principles of natural law whereby the author or creator shall be able to own the fruits of their labour.
    - Historically, the exploitation of literary works was tied to publishers who controlled the printing presses under royal grants, in particular the Stationers Company.
      - ‘The system, which continued until the abolition of the Star Chamber in 1641, was based on the Crown prerogative to grant licences and patents to individuals authorising them to print or import books. It was policed by the Stationers Company which was given a charter to act as a “literary constable” to license printing presses, censor books and to search out, seize and destroy illicit presses and seditious, heretical literature. In exchange, the Stationers Company obtained a substantial monopoly in the printing and selling of books.’ (Rocque Reynolds, Natalie Stoianoff and Alpana Roy, Intellectual Property: Text and Essential Cases (Federation Press, 5th ed, 2015) 7.
  - The law of copyright developed on the foundation that authors should have stronger rights in literary works than those who were simply producing or publishing the work.
  - The Statute of Anne was implemented in 1709 and was the first copyright legislation. As a result of the Statute of Anne, the right or power to print or reprint a book was now vested in the author and copyright became a creature of statute.
  - To trace the development of copyright law review the following cases:
    - 1. Millar v Taylor (1769) 4 Burr 2303
      - ‘It is certain every man has a right to keep his own sentiments, if he pleases: he has certainly a right to judge whether he will make them public, or commit them only to the sight of his friends. In that state, the manuscript is, in every sense, his peculiar property; and no man can take it from him, or make any use of it which he has not authorized, without being guilty of a violation of his property. And as every author or proprietor of a manuscript has a right to determine whether he will publish it or not, he has a right to the first publication: and whoever deprives him of that priority is guilty of a manifest wrong; and the Court have a right to stop it.’ (Yates J at [2379]
    - 1. Donaldson v Becket (1774) 4 Burr 2408
      - This case provides that copyright is not a perpetual right and instead is subject to statutory limitations (at the time, the Statute of Anne).
    - 1. Jefferys v Boosey (1854) 4 HLC 815
      - This case confirmed that copyright does not exist in common law, but is instead a creature of statute.
- International Copyright Treaties
  - Berne Convention for the Protection of Literary and Artistic Works (1886)
    - In defining protected works, Article 2 of the Berne Convention states
      - 2.1 The expression “literary and artistic works” shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets and other writings; lectures, addresses, sermons and other works of the same nature; dramatic or dramatico-musical works; choreographic works and entertainments in dumb show; musical compositions with or without words; cinematographic works to which are assimilated works expressed by a process analogous to cinematography; works of drawing, painting, architecture, sculpture, engraving and lithography; photographic works to which are assimilated works expressed by a process analogous to photography; works of applied art; illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science.
      - It shall, however, be a matter for legislation in the countries of the Union to prescribe that works in general or any specified categories of works shall not be protected unless they have been fixed in some material form.
      - Translations, adaptations, arrangements of music and other alterations of a literary or artistic work shall be protected as original works without prejudice to the copyright in the original work.
  - Agreement on Trade-Related Aspects of Intellectual Property Rights
    - Article 9 of the TRIPS Agreement requires:
      - Members shall comply with Articles 1 through 21 of the Berne Convention (1971) and the Appendix thereto. However, Members shall not have rights or obligations under this Agreement in respect of the rights conferred under Article 6bis of that Convention or of the rights derived therefrom.
      - Copyright protection shall extend to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such.
  - Copyright in Australia
    - While there are international treaties dealing with copyright, it is up to each jurisdiction to implement domestic copyright laws. In Australia, the relevant legislation is the Copyright Act 1968 (Cth), which establishes copyright as a statutory right and abolishes the common law right. This legislation has undergone numerous amendments due to the constantly evolving nature of what constitutes copyrightable works and to effect Australia’s international obligations.
  - Under the Copyright Act, copyright is a personal right that is transmissible by assignment, will or devolution (see section 196). The copyright holder has the exclusive right to copy the subject matter by publication, reproduction or performance. If there is no copying, then there is no infringement thus allowing for independent development of subject matter.
  - In Australia, a copyright work or subject matter other than work must be original, in material form and published/made in Australia. Some key principles of Australian copyright law are discussed in further detail below.
- Authorship and the Idea-Expression Dichotomy
  - Copyright protection extends to the expression, not the idea itself, eg: an accounting system or a recipe revealed in a book.
  - See for example, the case of Walter v Lane [1900] AC 539 – reporting a public speech, even though verbatim, can provide the reporter with copyright in the report as it is the bringing “into existence in the form of writing the piece of letterpress’.
  - See also Donoghue v Allied Newspapers Ltd [1938] Ch 106 – a jockey is paid for a series of interviews published by the interviewing journalist. Another journalist publishes an article based on the information in these articles – the jockey has no power to stop the “unauthorised” articles. The jockey does not own copyright in the original articles (that vests either with the journalist or their newspaper) unless there is a specific agreement between him and the interviewing journalist.
- Functionality & the Idea-Expression Dichotomy
  - This is most evident in relation to computer programs. These programs are defined as the expression of a set of instructions causing the computer to perform a particular function. There is copyright in the computer program as a literary work. However, another programmer can develop another different set of instruments that can produce the same function. There would also be copyright in this second computer program as a literary work. Now provided the second programmer did not copy the original computer program code, there will not be an infringement of copyright.
  - Accordingly, it is not an infringement if another expression is devised to perform the same function – or is it?
  - The issue of merger between the idea and the expression is discussed in the High Court case, Data Access Corporation v. Powerflex Services Pty Ltd [1999] HCA 49. In this case, a company was seeking to make their software ‘Powerflex’ interoperable with Data Access software known as ‘Dataflex’ and this required copying of certain Dataflex code. The High Court confirmed the Full Federal Court finding that similarity of function does not form the basis for claims of infringement.
  - Consider the subsequent High Court decision in IceTv Pty Limited V Nine Network Australia Pty Limited. [2009] HCA 14 (22 April 2009) which revolutionised attitudes to data protection. This case dealt with the ability to use programming information and reproduce that information in a different platform. The programming information set out the title of a program, a brief description and time that the program would be shown. The court held that
    - …the critical question is whether skill and labour was directed to the particular form of expression of the time and title information, including its chronological arrangement. The skill and labour devoted by Nine’s employees to programming decisions was not directed to the originality of the particular form of expression of the time and title information. The level of skill and labour required to express the time and title information was minimal. That is not surprising, given that, as explained above, the particular form of expression of the time and title information is essentially dictated by the nature of that information. (French CJ, Crennan, Kiefel JJ at 54)
- Patents
  - The Patent System
    - ‘A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. To get a patent, technical information about the invention must be disclosed to the public in a patent application.’ (World Intellectual Property Organisation)
      - A patent is a limited term monopoly right granted in respect of an invention
      - The patentee has exclusive rights to exploit, or authorise another person to exploit, the patent for a fixed term (typically 20 years)
      - Patents are limited to a particular jurisdiction:
        
        The process of obtaining a patent and protecting a patent in Australia is governed by the Patents Act 1990 (Cth)
        
        To obtain protection in other countries the owner of the invention must apply in each jurisdiction and may rely on the Paris Convention or the Patent Cooperation Treaty (PCT) to facilitate this process.
    - The rationale behind the patent system is the grant of limited monopoly rights in return for the disclosure of information about an invention that may not otherwise be disclosed to the public. Machlup and Penrose have studied the various rationales behind the patent system and identified four main rationales:
      - The natural law thesis
      - The reward by monopoly thesis
      - The monopoly profit incentive thesis
      - The exchange for secrets thesis
  - History of the Patent System
    - The first patent statute as such was passed in 1474 in Venice and was designed to encourage innovation within the Venetian state. The Venetian Statute states (as extracted in Reynolds, Stoianoff and Roy at 277)
      - ‘We have among us men of great genius, apt to invent and discover ingenious devices; and in view of the grandeur and virtue of our City, more such men come to us every day from diverse parts. Now, if provision were made for the works and devices discovered by such persons, so that others who may see them could not build them and take the inventor’s honour away, more men would then apply their genius, would discover and would build devices of great utility and benefit to our Commonwealth.’
    - In England, Queen Elizabeth I and King James I made extensive use of the system of granting royal licences or patents as a mechanism to raise revenue for the state. This approach became the subject of extensive debate with patents granted over a wide range of items including, as we see the in the case Darcy v Allin (1602) 77 ER 1260, monopolies over playing cards.
    - The case of Darcy and Allin has become known as the Case of Monopolies and involved a monopoly granted by Queen Elizabeth I (in return for a fee) to Darcy, a groom of the Privy Council, to import, make and sell playing cards. Allin imported playing cards and sold them for less than Darcy and as a result Darcy sued Allin for patent infringement. The court in this case found the monopoly to be invalid, on the grounds that it operated as a restraint of trade and is ‘a monopoly against the common law.’ (See Darcy v Allin (1602) 77 ER 1260, 1266)
    - Following this, the parliament passed the Statute of Monopolies in 1624. This legislation declared all monopolies to be void subject to an exception set out in section 6 as follows:
      - Provided also, and be it declared and enacted, that any declaration before mentioned shall not extend to any letters-patent and grants of privilege, for the term of fourteen years or under, hereafter to be made of the sole working or making of any manner of new manufacture within this realm, to the true and first inventor and inventors of such manufactures, which others, at the time of making such letters-patent or grant, shall not use, so as also they be not contrary to law, nor mischievous to the state, by raising prices of commodities at home, or hurt of trade, or generally inconvenient…
    - The Statute of Monopolies has been influential in the development of modern patent laws. In section 6 we can identify a number of principles that exist in patent laws today. These are the idea of:
      - A new manner of manufacture, that is, patentable subject matter;
      - A inventor or inventors; and
      - Limited term of monopoly (in this case 14 years).
    - In fact, section 6 of the Statute of Monopolies is incorporated into Australian patent law in section 18(1)(a) and the definition of ‘invention’ in Schedule 1.
      - Section 18(1)(a) ‘an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim: (a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies’.
      - Schedule 1 definition of ‘invention’ states ‘invention means any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention.’
    - Following the introduction of the Statute of Monopolies, patent law developed into a system requiring registration of patent rights and disclosure of an invention in the form of a specification. The Patents, Designs and Trade Marks Act 1883 (UK) was introduced and codified practice and procedure in compliance with obligations under the Paris Convention for the Protection of Industrial Property 1883.
  - International Patent Treaties
    - Paris Convention for the Protection of Industrial Property 1883
      - The Paris Convention is administered by the World Intellectual Property Organisation and provides for the protection of industrial property including ‘patents, utility models, industrial designs, trade marks, service marks, trade names, indications of source or appellations of origin, and the repression of unfair competition.’ (Article 1(2))
      - The key provisions of the Paris Convention in relation to patents are:
        
        Article 2 ‘National Treatment’: Nationals of one member country are guaranteed national treatment in any other member country, that is they shall receive the same protection in another member country as other nationals of that country.
        
        Article 4 ‘Priority Rights’: This article provides that the date that an application is first made in a member country shall serve as a priority date for any subsequent applications (in relation to the same invention) in member countries, provided that the subsequent application is made within 12 months from the date of the original application.
      - While the Paris Convention supports the globalisation of patent rights through the provisions in article 4, the Convention does not include substantive provisions setting out minimum standards for patent protection including elements of patentability.
  - Patent Cooperation Treaty 1970
    - This treaty is also administered by the World Intellectual Property Organisation and provides for a streamlined process in relation to applications for patent rights in multiple jurisdictions further supporting the globalisation of patent rights. The Patent Cooperation Treaty or PCT allows for a single application to be filed in one member country nominating other member countries in which protection is sought. The application is given an international filing date and an international search is carried out. Applications then enter the national phase and are processed in each jurisdiction according to the domestic laws of each jurisdiction.
  - TRIPS Agreement
    - The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) is administered by the World Trade Organisation (WTO) and contains substantive provisions regarding patent applications and grant of patent rights. The TRIPS Agreement requires that ‘patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application.’ (Article 27)
    - Countries may exclude certain inventions from patentability as follows:
      - ‘inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre publicor morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law’ (Article 27.2);
      - ‘diagnostic, therapeutic and surgical methods for the treatment of humans or animals’ (Article 27.3(a));
      - ‘plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, Members shall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof’ (Article 27.3(b))
  - Patent Law in Australia
    - The Patents Act 1903 (Cth) came into effect following Federation and was established under section 51(xviii) of the Australian Constitution. This Act was repealed and replaced by the Patents Act 1952 (Cth) which was based on UK legislation (Patents Act 1949 (UK)). The 1952 Act was then replaced by the current legislation, the Patents Act 1990 (Cth).
    - Under the Patents Act 1990 patents may be granted for inventions that meet the required elements of patentability as set out in section 18(1) for standard patents and section 18(1A) for innovation patents.
      - manner of manufacture
      - novelty or newness
      - inventive step or innovative step
      - industrial applicability or usefulness
      - not secretly used
    - The requirements for patent specifications are set out in section 40 of the Patents Act 1990.
- Trade Marks
  - Trade marks: nature & function
    - Trade marks may be considered to performed the following functions:
      - a commercial function that protects the interests of traders and signifies the origin of goods or services;
      - a consumer protection function by providing information about a product or service and acting as an indicator of quality.
    - While trade marks and the action of passing off protect similar rights, the processes are different. Trade mark registration allows a trader to obtain protection and bring an action for infringement much more readily than bringing an action for passing off under common law. This is due to the three elements that must be proved to bring a successful case for passing off:
      - (i) reputation or goodwill in trade;
      - (ii) misrepresentation leading to deception of members of the public; and
      - (iii) injury or damage to reputation or goodwill as a result of the misrepresentation.
  - International Trade Mark Treaties
    - Madrid Agreement Concerning the International Registration of Marks 1891 and Madrid Protocol relating to the Madrid Agreement Concerning the International Registration of marks 1989
      - Prior to the Madrid Protocol – Separate applications in each of the national registry offices of the various countries in which registration was sought
      - After the Madrid Protocol – A single application upon which the applicant designated the countries in which registrations are sought.
    - Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS)
      - Section 15 of the TRIPS Agreement requires that
        
        ‘(a)ny sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible.’
  - Trade marks in Australia
    - Similar to copyright and patent legislation, trade mark legislation was introduced under section 51(xviii) of the Australian Constitution. The meaning of a ‘trade mark’ under the Trade Marks Act 1903 (Cth) was considered in the case of Attorney-General (NSW) v Brewery Employees Union NSW (1908) 6 CLR 469 where the court found that the term
      - meant a mark which was a visible symbol of a particular type of incorporeal or industrial property consisting in the right of the person engaged in trade to distinguish by a special mark goods in which he deals, or with which he has dealt, from the goods of other persons. (at 512-513)
    - The Trade Marks Act 1903 was followed by the Trade Marks Act 1955 which was then repealed and replaced by the current legislation, the Trade Marks Act 1995.
  - Definition of trade mark: Trade Marks Act 1995
    - A trade mark must cannot be descriptive or common place for the type of goods or services to be marked. Section 17 of the Trade Marks Act 1995 defines a trade mark as “…a sign, used or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by another person”
  - Definition of ‘sign’: Trade Marks Act 1995
    - Section 6 of the Trade Marks Act 1995 defines a “sign” (used in the definition of ‘trade mark’) as “includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.”
    - Despite the definitions set out in the legislation, it is still necessary to apply the general principles of registrability established in the case law.
  - Registrable marks under the Trade Marks Act 1995
    - In order to be registrable under the Trade Marks Act 1995, a trade mark must be capable of:
      - being represented graphically; and
      - distinguishing goods or services.
    - Trade marks must not be:
      - Scandalous or contrary to law;
      - Likely to deceive or cause confusion; or
      - Substantially identical with or deceptively similar to another trade mark registered in relation to the same or related goods and services.
  - Expansion of trade marks
    - Three further types of trade marks exist:
      - Collective trade marks (Part 15) - akin to workers’ marks;
      - Certification trade marks (Part 16) - denote a particular quality/origin/other characteristic;
      - Defensive trade marks (Part 17) - designed for protection of well known marks.

Week 3: International conventions and agreements

International conventions and agreements
- International conventions and agreements
  - Berne Convention
    - Definition of copyright protected material: literary and artistic works including musical and dramatic works etc
    - Limitations to copyright - fair use
    - Protection periods
    - No need for registration
    - Moral rights protection
  - Paris Convention
    - Industrial Property covered:
      - Patents
      - Trade Marks
      - Designs
    - National Treatment (Art.s 2 & 3)
    - Right of Priority, Priority Date (Art. 4) - 12 months for Patents, 6 months for Trade Marks and for Designs
    - Does not require uniformity of protection - for example, what may be patentable in one member country need not be patentable in another (Art. 4bis(1))
    - Compulsory licences are also provided for to ensure that the patent is worked in the member country.
  - Madrid Protocol and other trade mark treaties
    - Madrid Protocol
      - Similar model for international registration of trade marks
      - A mark is registered or an application for registration is made in the office of origin
      - Another application in one language to the International Bureau nominating other countries - International Register
    - Other Trade Mark Treaties
      - Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks 1957
      - Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks 1973
  - Patent cooperation treaty and other patent treaties
    - PCT
      - Administered by the International Bureau of the World Intellectual Property Organisation (WIPO)
      - Filing of single application in a member country & nominating others for protection
      - International filing date & single search for novelty assessment
      - Publication 18 months after.
    - Other Patent Treaties
      - Strasbourg Agreement Concerning the International Patent Classification 1971
      - Budapest treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure 1977
      - International Convention for the Protection of New Varieties of Plants 1961 (UPOV)
    - Designs treaties
      - Hague Agreement Concerning the International Deposit of Industrial Designs 1925
      - Locarno Agreement Establishing an International Classification for Industrial Designs 1968
    - Harmonisation and international trade
      - Organisations: World Intellectual Property Organisation - registration activities, intergovernmental cooperation on administration, program activities.
      - World Trade Organisation - administer and overseas new trade rules, dispute resolution, continue GATT
    - WIPO - programs
      - Patent Law Treaty (Geneva 2000)
      - Trademark Law Treaty (Geneva 1994)
      - WIPO Copyright Treaty (1996)
- World Trade Organisation (WTO) and Trade Related Aspects of Intellectual Property (TRIPS)
  - World Trade Organisation and Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement)
    - The Agreement on Trade-Related Aspects of Intellectual Property Rights is an annex to the Marrakesh Agreement Establishing the World Trade Organisation. The TRIPS Agreement sets standards for the availability, scope and use of intellectual property rights and introduces strong enforcement provisions (including remedies and border measures). Member countries are also subject to the dispute resolution provisions under the World Trade Organisation.
    - The TRIPS Agreement provides for the recognition of the Paris, Berne and Rome Conventions (among others) and requires member countries to comply with the provisions of these Conventions.
  - TRIPS Objectives
    - Article 7 of the TRIPS Agreement sets out the following objectives:
      - ‘The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.’
  - TRIPS Principles
    - Article 8
      - Members may, in formulating or amending their laws and regulations, adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development, provided that such measures are consistent with the provisions of this Agreement.
      - Appropriate measures, provided that they are consistent with the provisions of this Agreement, may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology.
  - TRIPS Standards
    - These are minimum standards and cover:
      - Copyright and related rights
      - Trademarks and geographical indications
      - Industrial Designs
      - Patents
      - Integrated designs of circuit layouts
      - Undisclosed information
      - Anti-competitive Practices in Contractual Licences
  - Enforcement under TRIPs
    - Part III provides guidelines for enforcement.
    - General obligation (Art 41)
      - Enforcement procedures to be available
      - Expeditious remedies
      - Not unnecessarily complicated or costly
      - Written and reasoned decisions to be available to the parties
      - Judicial review of administrative decisions and initial judicial decisions
    - Civil and Admin Procedures & remedies (Arts 42 - 49)
      - Injunctions - to prevent manufacture and sale of infringing goods in marketplace
      - Damages and expenses including legal fees
      - Account of profits
      - Disposal and destruction of infringing goods and materials
      - Information about persons involved in the infringement and distribution of infringing articles
    - Provisional Measures (Art 50)
      - Injunctions to prevent infringements from occurring and to preserve evidence
      - Inaudita altera parte, where delay is likely to cause irreparable harm or evidence may be destroyed.
    - Border measures (Arts 51 - 60)
      - Goods not to be released from customs if goods are suspected to infringe trade marks or copyrights
      - Prima facie evidence and description of goods required
      - IPR holder and importer may request inspection of goods to substantiate or disprove claims
      - Ex officio action of the authorities, which may include destruction or disposal of infringing goods.
    - Criminal Procedures (Art 61)
      - Criminal penalties for wilful trade mark and copyright piracy on commercial scale
      - Sufficiently deterrent fines & imprisonment
      - Power of seizure, forfeiture and destruction of infringing goods and materials
- VCLT, object and purpose and TRIPS
  - The VCLT
    - The Vienna Convention on the Law of TreatiesLinks to an external site. guides interpretation of treaties and is considered to codify customary international law on the interpretation of treaties.
    - Article 31 relevantly provides:
      - General rule of interpretation
        
        A treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose.
        
        The context for the purpose of the interpretation of a treaty shall comprise, in addition to the text, including its preamble and annexes:
        
        (a) any agreement relating to the treaty which was made between all the parties in connexion with the conclusion of the treaty;
        
        (b) any instrument which was made by one or more parties in connexion with the conclusion of the treaty and accepted by the other parties as an instrument related to the treaty.
        
        There shall be taken into account, together with the context:
        
        (a) any subsequent agreement between the parties regarding the interpretation of the treaty or the application of its provisions;
        
        (b) any subsequent practice in the application of the treaty which establishes the agreement of the parties regarding its interpretation;
        
        (c) any relevant rules of international law applicable in the relations between the parties.
        
        A special meaning shall be given to a term if it is established that the parties so intended.
      - Article 32 provides:
        
        Supplementary means of interpretation
        
        Recourse may be had to supplementary means of interpretation, including the preparatory work of the treaty and the circumstances of its conclusion, in order to confirm the meaning resulting from the application of article 31, or to determine the meaning when the interpretation according to article 31:(a) leaves the meaning ambiguous or obscure; or(b) leads to a result which is manifestly absurd or unreasonable
  - Object and purpose of TRIPS
    - Preamble
      - Members,
        
        Desiring to reduce distortions and impediments to international trade, and taking into account the need to promote effective and adequate protection of intellectual property rights, and to ensure that measures and procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade;
        
        Recognizing, to this end, the need for new rules and disciplines concerning:
        
        (a) the applicability of the basic principles of GATT 1994 and of relevant international intellectual property agreements or conventions;
        
        (b) the provision of adequate standards and principles concerning the availability, scope and use of trade-related intellectual property rights;
        
        (c) the provision of effective and appropriate means for the enforcement of trade-related intellectual property rights, taking into account differences in national legal systems;
        
        (d) the provision of effective and expeditious procedures for the multilateral prevention and settlement of disputes between governments; and
        
        (e) transitional arrangements aiming at the fullest participation in the results of the negotiations;
        
        Recognizing the need for a multilateral framework of principles, rules and disciplines dealing with international trade in counterfeit goods;
        
        Recognizing that intellectual property rights are private rights;
        
        Recognizing the underlying public policy objectives of national systems for the protection of intellectual property, including developmental and technological objectives;
        
        Recognizing also the special needs of the least-developed country Members in respect of maximum flexibility in the domestic implementation of laws and regulations in order to enable them to create a sound and viable technological base;
        
        Emphasizing the importance of reducing tensions by reaching strengthened commitments to resolve disputes on trade-related intellectual property issues through multilateral procedures;
        
        Desiring to establish a mutually supportive relationship between the WTO and the World Intellectual Property Organization (referred to in this Agreement as “WIPO”) as well as other relevant international organizations;
    - Article 7
      - Objectives
        
        The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.
    - Article 8
      - Principles
        
        Members may, in formulating or amending their laws and regulations, adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development, provided that such measures are consistent with the provisions of this Agreement. 2. Appropriate measures, provided that they are consistent with the provisions of this Agreement, may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology.
    - Doha Declaration on Public Health
      - 4. We agree that the TRIPS Agreement does not and should not prevent members from taking measures to protect public health. Accordingly, while reiterating our commitment to the TRIPS Agreement, we affirm that the Agreement can and should be interpreted and implemented in a manner supportive of WTO members’ right to protect public health and, in particular, to promote access to medicines for all. In this connection, we reaffirm the right of WTO members to use, to the full, the provisions in the TRIPS Agreement, which provide flexibility for this purpose.
      - Accordingly and in the light of paragraph 4 above, while maintaining our commitments in the TRIPS Agreement, we recognize that these flexibilities include:
        
        In applying the customary rules of interpretation of public international law, each provision of the TRIPS Agreement shall be read in the light of the object and purpose of the Agreement as expressed, in particular, in its objectives and principles.
        
        Each member has the right to grant compulsory licences and the freedom to determine the grounds upon which such licences are granted.
        
        Each member has the right to determine what constitutes a national emergency or other circumstances of extreme urgency, it being understood that public health crises, including those relating to HIV/AIDS, tuberculosis, malaria and other epidemics, can represent a national emergency or other circumstances of extreme urgency.
        
        The effect of the provisions in the TRIPS Agreement that are relevant to the exhaustion of intellectual property rights is to leave each member free to establish its own regime for such exhaustion without challenge, subject to the MFN and national treatment provisions of Articles 3 and 4.
- Negotiating international agreements
  - International Law-making
    - The process of negotiating international intellectual property agreements requires striking a balance –
      - Overly strong IP protection leads to excessive monopoly; while
      - Weak protection results in free-riding and consequently under-investment in innovation
    - The negotiations of international treaties have raised concerns relating to the impact of globalisation that international treaties have on democratic processes particularly where parties may have different levels of negotiating power. In negotiating treaties it is important to ensure that the process allows for democratic law-making by ensuring the representation of all interests and providing parties with full information about the consequences of entering into any arrangement and without coercion of one party or group of parties over others.
  - Negotiating the TRIPS Agreement
    - Concerns have been raised regarding the process of negotiating the TRIPS Agreement including as to the following:
      - Democratic process for some but not for others
      - Deliberate under-representation of developing countries
      - Incomplete information or a lack of understanding of the implications
      - Coercion as a powerful tactic
  - As a result, the process has a resulted in an international intellectual property agreement that has been entered into by the many in favour of the few through:
    - the device of trade promises
    - avoiding classification as hostile to innovation-based investment
    - avoiding aggressive bilateralism (that is the negotiation of bilateral free trade agreements)
- Development perspectives on TRIPS
  - There are two key roles for intellectual property in economic development:
    - Enabling domestic innovation and economic growth; and
    - Enabling foreign direct investment that transfers technology through formal and informal spillovers
  - The rationale given for encouraging developing countries to implement protections for intellectual property is that exclusive rights in intangibles facilitate trade in them and the transfer of underlying technology as a result.
  - The question is: are intellectual property rights calibrated too high to facilitate investment?
- Empirical evidence: impact of TRIPS
  - Does the TRIPS Agreement limit developing countries’ ability to move up the technology value chain? Take a look at Anselm Kamperman Sanders and Dalindyebo Shabalala, ‘Intellectual Property Treaties and Development’ in Daniel J. Gervais (ed), Intellectual property, trade & development: strategies to optimize economic development in a TRIPS-plus era (Oxford University Press, 2nd ed, 2014) 41.
    - Not many studies pointing to a positive or negative impact on growth from being TRIPS compliant although some impact on foreign direct investment (FDI).
    - Literature indicates significant short term static costs to the increase of intellectual property protection.
    - See for example, the case study of India which has demonstrated few dynamic benefits from increased patent protection.
  - According to Fink and Maskus, until more data on the demand and price elasticities for technologies and technological products is available, modelling the impact of higher intellectual property in developing countries will be difficult, if not unreliable.
  - In 2009, WIPO published a series of papers that considered the need for empirical economic research from the perspective of IPR and developing nations in, “The Economics of Intellectual Property Suggestions for Further Research in Developing Countries and Countries with Economies in Transition” . In reviewing the existing empirical research, these papers identify the key research questions and research gaps while exploring potential avenues for future research.
  - Robert Ostergard uses empirical evidence to question the traditional relationship between IPR and sound economic growth. See Robert Ostergard, “Economic Growth and Intellectual Property Rights Protection” on the development dilemma faced by developing countries:
    - “if they open their domestic markets to trade, they face political and economic pressure to protect foreign IP; if they protect foreign IP, they create conditions that force them to abandon their goal to obtain IP as inexpensively as possible. Developing countries, as prior research shows, use imitation and adaptation of technology as a means of jumpstarting the development process; stopping that process may have significant, long-term ramifications for state development goals.”
TRIPS flexibilities
- While the TRIPS Agreement provides for minimum standards for intellectual property protection there are flexibilities incorporated into the Agreement particularly for developing and least developed countries. These flexibilities can allow World Trade Organisation members to develop at their own pace. This is in recognition of the fact that while intellectual property rights can create a market for intellectual and industrial creativity and serve as a conduit for technology transfer, more substantive intellectual property rights do not automatically lead to more investment or innovation and that more active interventions may be required.
- These provisions include the transitional provisions set out in articles 65 and 66 of the TRIPS Agreement as follows:
  - Article 65
  - Transitional Arrangements
    - 1. Subject to the provisions of paragraphs 2, 3 and 4, no Member shall be obliged to apply the provisions of this Agreement before the expiry of a general period of one year following the date of entry into force of the WTO Agreement.
    - 1. A developing country Member is entitled to delay for a further period of four years the date of application, as defined in paragraph 1, of the provisions of this Agreement other than Articles 3, 4 and 5.
    - 1. Any other Member which is in the process of transformation from a centrally-planned into a market, free-enterprise economy and which is undertaking structural reform of its intellectual property system and facing special problems in the preparation and implementation of intellectual property laws and regulations, may also benefit from a period of delay as foreseen in paragraph 2.
    - 1. To the extent that a developing country Member is obliged by this Agreement to extend product patent protection to areas of technology not so protectable in its territory on the general date of application of this Agreement for that Member, as defined in paragraph 2, it may delay the application of the provisions on product patents of Section 5 of Part II to such areas of technology for an additional period of five years.
    - 1. A Member availing itself of a transitional period under paragraphs 1, 2, 3 or 4 shall ensure that any changes in its laws, regulations and practice made during that period do not result in a lesser degree of consistency with the provisions of this Agreement.
  - Article 66
  - Least-Developed Country Members
    - 1. In view of the special needs and requirements of least-developed country Members, their economic, financial and administrative constraints, and their need for flexibility to create a viable technological base, such Members shall not be required to apply the provisions of this Agreement, other than Articles 3, 4 and 5, for a period of 10 years from the date of application as defined under paragraph 1 of Article 65. The Council for TRIPS shall, upon duly motivated request by a least-developed country Member, accord extensions of this period.
    - 1. Developed country Members shall provide incentives to enterprises and institutions in their territories for the purpose of promoting and encouraging technology transfer to least-developed country Members in order to enable them to create a sound and viable technological base.
- Perspectives on Intellectual Property and Development
  - Substantive Equality approach: Margaret Chon, 2014
    - Margaret Chon discusses the importance of recognising knowledge goods as public goods and rejects privileging exclusive intellectual property rights over other rights such as commons-based creation, diffusion, prizes, procurement, and taxation.
    - Articles 7 and 8 of the TRIPS Agreement are important to all goods as knowledge goods contribute to public policy goals other than innovation. Knowledge goods are inputs to other public goods such as education and health.
    - Intellectual property’s innovation mandate should be recontextualised to acknowledge the development concerns of marginalised populations (Jeffrey Sachs) rather than imposing top-down systems without considering cultural specificity.
  - Can IP facilitate development? Kamperman Sanders and Shabala, 2014
    - Market conditions in developing countries are often marred by corruption, lack of transparency, market access and human capital and the inability to absorb technology and knowledge.
    - Inclusion of developing countries in the world knowledge economy, however, does offer opportunities for development.
    - Evidence of progress in developing economies like India, China, and Brazil. Effective enforcement and the establishment of minimum IPR standards form the conditions for including developing economies in the global marketplace.
    - Active policies ensuring sufficient learning and spillovers
    - Constant calibration and balancing are likely to be the future of intellectual property policymaking in developing countries and multilateral fora, rather than the pursuit of purely higher intellectual property standards.
  - IP Calibration: Daniel Gervais, 2014
    - Gervais advocates effective calibration by identifying the ‘level of rights and exceptions that, within the range of TRIP-compliant implementations, is most likely to achieve the policy purpose of maximizing innovation while minimizing negative welfare impacts.’
    - Gervais also addresses the protection of traditional and indigenous innovation
    - Two approaches: R&D Spillovers and development of innovative industry clusters
  - R&D spillovers: Gervais
    - Domestic policy should aim to maximise spillovers by:
      - incentivising inclusion of R&D elements in foreign direct investment (FDI) transactions;
      - innovation governance involving civil society to allow more complete human and economic development.
    - Other tools may be used (other than FDI) such as:
      - licensed technology transfer, patent disclosure and reverse engineering;
      - developing competition laws to limit negative welfare impacts of higher IP protection,
      - recognising essential technologies and means of accessing them (human rights for essential medicine) and
      - compulsory licensing (decision should recognise this may increase know how in very limited ways and result in targeted company abandoning other domestic investments).
  - Innovative Industry Clusters: Gervais
    - Development of clusters of innovative industry, venture capital and researchers:
      - successful industrial policy involving private capital,
      - higher education resources relevant to that area and government support.
Opportunities for developing nations
- However, all is not lost and there are opportunities for developing nations under the TRIPS Agreement. Pro-competitive measures under the TRIPS Agreement provide developing nations (or IP-importing nations) with the opportunity to encourage price competition and access to protected products.
- This raises the question - Is there a chance to turn the tables? Can developing nations move towards a position of power? If this is to be achieved, there is a need to develop indigenous technological capacity. This may require the adoption or consideration of a number of measures:
  - Parallel imports and the doctrine of exhaustion of rights
  - Exceptions to patent rights: experimental use; Bolar exception
  - Compulsory licensing
  - Addressing the issue of data protection in the registration of pharmaceuticals
WIPO Development Agenda
- WIPO Development Agenda
  - The World Intellectual Property Organisation (WIPO) formally established the Development Agenda in October 2007. According to WIPO, the WIPO Development Agenda ‘ensures that development considerations form an integral part of WIPO’s work. The effective implementation of the Development Agenda, including the mainstreaming of its recommendations into our substantive programs, is a key priority.’
  - The WIPO General Assembly adopted a set of 45 recommendations, divided into 6 clusters, to enhance the development dimension of WIPO’s activities. As part of this process, WIPO Member States also approved in 2008 a recommendation to establish a Committee on Development and Intellectual Property (CDIP).
- Development Agenda Recommendations Clusters
  - Cluster A: Technical Assistance and Capacity Building
    - 14 recommendations
  - Cluster B: Norm-setting, flexibilities, public policy and public domain
    - 9 recommendations
  - Cluster C: Technology Transfer, Information and Communication Technologies (ICT) and Access to Knowledge
    - 9 recommendations
  - Cluster D: Assessment, Evaluation and Impact Studies
    - 6 recommendations
  - Cluster E: Institutional Matters including Mandate and Governance
    - 6 recommendations
  - Cluster F: Other Issues
    - 1 recommendation
- Committee on Development and Intellectual Property (CDIP)
  - The mandate of the CDIP, as established by the WIPO General Assembly (document A/43/16, page 135), is to:
    - develop a work-program for implementation of the 45 adopted recommendations;
    - monitor, assess, discuss and report on the implementation of all recommendations adopted, and for that purpose it shall coordinate with relevant WIPO bodies; and
    - discuss IP and development related issues as agreed by the Committee, as well as those decided by the General Assembly.
  - The Committee reports and makes recommendations annually to the WIPO General Assembly
Millennium Declaration
- The adoption of the Millennium Declaration in 2000 by all 189 member states of the UN General Assembly was a defining moment for global cooperation in the 21st century.
- The Declaration set out within a single framework the key challenges facing humanity at the threshold of the new millennium, outlined a response to these challenges, and established concrete measures for judging performance through a set of inter-related commitments, goals and targets.
- The Millennium Declaration brought clarity to the shared and individual roles and responsibilities of key parties:
  - of Governments to achieve or enable the achievement of goals and targets;
  - of the network of international organisations to marshal their resources and expertise in the most strategic and efficient way possible to support and sustain the efforts of partners at global and country levels;
  - of citizens, civil society organisations (CSOs) and the private sector, to engage fully in this ground-breaking effort, by bringing to bear their unique strengths for motivation, mobilisation and action.
Sustainable development goals
- 17 Sustainable Development Goals were adopted at a United Nations summit in September 2015. The Sustainable Development Goals (SDGs) are as follows:
  - Goal 1: End poverty in all its forms everywhere
  - Goal 2: End hunger, achieve food security and improved nutrition and promote sustainable agriculture
  - Goal 3: Ensure healthy lives and promote well-being for all at all ages
  - Goal 4: Ensure inclusive and quality education for all and promote lifelong learning
  - Goal 5: Achieve gender equality and empower all women and girls
  - Goal 6: Ensure access to water and sanitation for all
  - Goal 7: Ensure access to affordable, reliable, sustainable and modern energy for all
  - Goal 8: Promote inclusive and sustainable economic growth, employment and decent work for all
  - Goal 9: Build resilient infrastructure, promote sustainable industrialization and foster innovation
  - Goal 10: Reduce inequality within and among countries
  - Goal 11: Make cities inclusive, safe, resilient and sustainable
  - Goal 12: Ensure sustainable consumption and production patterns
  - Goal 13: Take urgent action to combat climate change and its impacts
  - Goal 14: Conserve and sustainably use the oceans, seas and marine resources
  - Goal 15: Sustainably manage forests, combat desertification, halt and reverse land degradation, halt biodiversity loss
  - Goal 16: Promote just, peaceful and inclusive societies
  - Goal 17: Revitalize the global partnership for sustainable development
- The World Intellectual Property Organisation has identified activities that have been undertaken to support implementation of the Sustainable Development Goals by member countries.
Intellectual Property and Doha Development Round
- The Doha round of negotiations commenced in 2001 and covers a wide range of topics including agriculture, services and trade facilitation as well as intellectual property rights. The Doha round has considered the following key intellectual property issues:
  - Geographical Indications Register: create a multilateral register for geographical indications for wines and spirits.
  - Geographical Indications Extension: proposal to extend to other products the higher level of geographical indications protections now given to wine and spirits.
  - Disclosure and traditional knowledge/biodiversity: proposal to require the disclosure, in patent applications, of origin of genetic material and traditional knowledge used in inventions.

Week 4: IP and development: the case of China

Intellectual Property and China
- Introduction
  - The last 30 years has witnessed dramatic change in the intellectual property landscape of China.
  - China moved from a collective society to one that recognises the necessity of individual economic rights.
  - Purpose? To achieve the four modernisations in industry, agriculture, national defence, and science and technology, and build a socialist market economy.
  - Result? Major player in the world economy being the single largest contributor to global growth and second largest economy in purchasing power parity terms.
- Why Intellectual Property?
  - The need for foreign investment and foreign technology has dictated the need for world class intellectual property rights recognition.
  - The Chinese knew this over 100 years ago with the westernisation movement recognising the need to adopt intellectual property rights to encourage technological development however this achieved only temporary change.
- The process the second time around
  - China is one of the most marked examples of having to introduce a completely new regime at a very high standard of protection but then taking advantage of the circumstances of being a developing nation to catapult itself with FDI to being one of the largest economies in the world in a relatively short space of time.
  - Deng Xiaoping pursued a socialist market economy and with this came the introduction of more modern intellectual property laws with an initial focus on intellectual property rights supporting technological developments such as patents.
  - China then also signed up to a number of international intellectual property rights conventions and agreements joining the World Intellectual Property Organisation in 1980 and acceding to the various WIPO treaties as follows:
    - Paris Convention 19 December 1984
    - Berne Convention 10 July 1992
    - Madrid Protocol 1 September 1995
  - This process then culminated in December 2001 with China obtaining membership in the World Trade Organisation and signing up to the obligations under the TRIPS Agreement
IPR enforcement in China
- IPR enforcement in China
  - Despite the development of substantive intellectual property law in China, intellectual property infringement remains problematic. China has been in the US Trade Representative’s Special 301 Report for two decade
  - The European Commission has engaged in IPR dialogues with China since 2004 to deal with counterfeiting and piracy of the products of European companie
- Recent trends in IP enforcement in China
  - Significant numbers of enforcement cases with the majority being Chinese national vs Chinese national
  - Movement away from administrative action to civil action as the predominant mechanism for dealing with IP enforcement
  - Specific government operations to deal with large scale piracy
  - Improved intellectual property laws
  - Improved public awareness of intellectual property rights and enforcement
  - Better trained judiciary and administrators
- Recent WTO action
  - The United States has initiated dispute resolution proceedings in the WTO in relation to China and Intellectual Property Rights.
  - See China – Measures Affecting the Protection and Enforcement of Intellectual Property Rights (WT/DS362). The proceedings raised the concerns of the United States in relation to a number of areas including:
    - China’s thresholds for criminal procedures and penalties (Arts 61, 41.1 of the TRIPS Agreement)
    - Measures for disposing of infringing confiscated goods (Arts 46 and 59 of TRIPS Agreement)
    - Denial of copyright for unauthorised publications (Arts 9.1, 14 of the TRIPS Agreement).
- Dispute Resolution Decision
  - The WTO DSB adopted the panel report which found that the first sentence of Article 4 of the Copyright Law is inconsistent with China’s obligations under Article 41.1 of the TRIPS and Article 5(1) of the Berne Convention (1971), as incorporated by Article 9.1 of the TRIPS Agreement.
  - At the time Article 4 of the Copyright Law stated:
    - Works the publication or distribution of which is prohibited by law shall not be protected by this Law. Copyright owners, in exercising their copyright, shall not violate the Constitution or laws or prejudice the public interests.
- Customs measures
  - The panel report determined that the remedies under Article 59 of the TRIPS Agreement don’t apply to goods being exported. Further, the United States of America did not make out that the customs measures implemented by China were inconsistent with Article 59 as it incorporates the first sentence of Article 46 – namely, permitting the infringing goods to be “disposed of outside the channels of commerce in such a manner as to avoid any harm caused to the right holder” or be destroye
  - However, the customs measures were considered inconsistent with Article 59 as regards to the fourth sentence of Article 46, namely “In regard to counterfeit trademark goods, the simple removal of the trademark unlawfully affixed shall not be sufficient, other than in exceptional cases, to permit release of the goods into the channels of commerce.”
- Criminal Actions
  - The United States of America did not make out that the criminal thresholds for infringement were inconsistent with the requirements of Article 61 of the TRIPS Agreement, namely that ‘Members shall provide for criminal procedures and penalties to be applied at least in cases of wilful trademark counterfeiting or copyright piracy on a commercial scale.’
- Result?
  - China has claimed to have satisfied the requirements of the Panel and the Copyright Law has been amended effective 1 April 2010. The revised article 4 of the Copyright Law now states:
    - Copyright owners shall not breach the Constitution or laws or prejudice public interests when exercising their copyright. The State shall supervise and administer the publication and dissemination of works in according to law.
  - As for the rest, China and the United States of America are engaged in proceedings under the Dispute Settlement Understanding.
Court System and Intellectual Property cases
- Court Structure
  - There are four tiers to the courts in China.
    - Supreme People’s Court
    - High People’s Court - each province, autonomous region and municipality under authority of central government
    - Intermediate People’s Court - each major city
    - Basic / Local People’s Court - each county and district in each major city
- Not a Common Law System
  - Based on civil law traditions: European influence followed by Soviet influence
  - Judge-made law effectively confined to the judicial interpretations issued by the Supreme People’s Court - the highest judicial authority in the PRC (now some lower courts as well).
  - Judgments have been short and in the past only a few cases were made public. We are seeing change in recent times including adoption of common law concepts/procedures.
- Handling IP Cases - generally
  - The first instance hearing is usually in either the Intermediate People’s Courts or the High People’s Court when a foreigner is involved.
    - IP Tribunals or Trial Divisions were established in the courts from 1993.
    - These tribunals were renamed third civil tribunals (2000) - for infringement and contract disputes.
    - Administrative tribunals for hearing validity and ownership disputes.
    - China is now establishing separate IP courts of appeal.
- IP Hearings – Case Jurisdiction, November 2014
  - Supreme People’s Court on Case Jurisdiction of Intellectual Property Courts in Beijing, Shanghai, and Guangzhou (Fa [2014] No. 267)
  - IP courts jurisdiction in first instance cases, in respective municipal area:
    - civil and administrative cases involving patents, new varieties of plants, layout designs of integrated circuit, technical know-how, and computer software;
    - administrative cases filed against administrative acts committed by State Council departments and local people’s government at or above the county level that involve copyright, trade marks, unfair competition; and
    - civil cases involving recognition of well-known trade marks.
- Beijing Intellectual Property Court
  - Jurisdiction over the following first-instance administrative cases:
    - dissatisfaction with the rulings or decisions made by State Council departments concerning patent, trademark, new varieties of plants, layout designs of integrated circuit and other intellectual property;
    - dissatisfaction with the judgments made by State Council departments on compulsory licensing or royalties or remunerations for compulsory licensing made by the State council departments concerning patent, new varieties of plants, or layout designs of integrated circuit;
    - dissatisfaction with the other administrative acts of State Council departments concerning IPR licensing right
- Appeal Cases
  - Appeal cases brought by parties concerned against the first-instance civil and administrative judgments and rulings made by grassroots court concerning copyright, trade mark, technical contract, unfair competition, and other intellectual property rights should be tried by the municipal intellectual property court.
  - Cases brought by parties concerned against first-instance judgments and rulings made by an intellectual property court and cases filed with the superior court for reconsideration should be tried by the intellectual property division of the municipal high people’s court where the intellectual property court is located.
- Accessing Case Decisions
  - The Beijing High People’s Court in 2005 announced the 10 top IP cases for 2003-2004 and provided summaries in English and the Supreme People’s Court started doing the same a few years later. Among the top 10 reported for 2010, 5 cases involved foreign parties.
  - Now most courts have websites for their cases but the English translations ultimately are summaries of the decisions. Besides the commercial law databases like IntelliConnect (CCH) one can search for case summaries at www.chinaipr.com and www.english.court.gov.cn
- Case Volumes

2007
2008
2011
Total number of cases filed
~17,877
24,406

Total number of cases resolved

23,518
58,201
Copyright

10,951
35,185
Trade Marks

6233
12,991
Patents

4074
7819
Unfair Competition

1185
1137
Technology Contracts

623
557
Other IP cases

1340
2193
Appeals cases filed

4759

Appeals cases resolved

4699
7659
IP related criminal cases (local courts)
2684
3326
5707

2014 Local People’s Court Statistics (2013 % difference)
- IPR civil cases of first instance received (+7.83%) concluded (+7.04%)
- New patent cases 9648 (+4.93%)
- Trade mark cases 21,362 (-8.21%)
- Copyright cases 59,493 (+15.86%)
- Technology contract cases 1071 (+12.86%)
- Unfair competition parts 1422 cases (+9.22%)
- Other intellectual property cases 2526 (+0.48%)
2014 Appeals
- Local people’s courts received IP civil cases of second instance 13760 (+15.08%) and concluded 13708 (+18.65%)
- Total received IP civil retrial cases 80 (+6.67%) and concluded 94 (-2.08%)
- SPC received 336 IPR civil cases (-26.48%) and concluded 339 (-18.71%)
- SPC received 11 cases and concluded 10 cases of second instance
- Source: SIPO White Paper 2014
2015 Criminal Cases, SIPO
- Local peoples’ courts new IP related criminal cases - 10,809 first instance and 782 second instance (stable compared to previous year’s increase of 18.83%)
  Type of case
  Number
  Percentage Change
  Guilty of IPR infringement
  3542

Guilty of production and sale of counterfeit and substandard goods (involving IPR infringement)
3042

Guilty of illegal business (involving IPR infringement)
1250

Guilty of other crimes (involving IPR infringement)
85

Effective judgments
13,904
+3.58%
Imposed criminal penalties
13,734
+3.54%
Received second instance criminal IPR cases
573
-13.44%
Concluded second instance criminal IPR cases
521
-16.91%

Cases with Foreign parties
- 5% of cases brought by foreign companies.
  Type of case
  2008
  2011
  2014
  First instance civil cases involving foreign parties
  1139
  1321
  1716
  First instance civil cases involving parties from Hong Kong, Macau and Taiwan
  225
  635
  426
Chinese Intellectual Property Legislation
- There are 3 main pieces of legislation covering IPR in China, each administered by a different government authority:
  - Patent Law of the PRC
  - Trademark Law of the PRC
  - Copyright law of the PRC
  - Each Law has various implementing provisions and regulations. You can view copies of the Chinese Intellectual Property legislation on the World Intellectual Property Organisation database WIPOLexsite.
  - In addition to the laws set out above, the Law Against Unfair Competition of the PRC protects undisclosed information, anti-competitive practices & unregistered trade names.
    - China has also implemented specific legislation for the protection of intangible cultural heritage (the Law of the People’s Republic of China on Intangible Cultural Heritage 2011) and regulations on the protection of traditional medicines (see e.g. Regulation of April 2, 2003 of the People’s Republic of China on Traditional Chinese Medicines 2003).
Patent Law in China
- Patent Law of the People’s Republic of China
  - Passed March 1984 and commenced operation 1 April 1985 to encourage foreign investment and technology transfer.
  - Revisions & amendments to regulations as a result of WTO commitments – new Patent Law commenced 1 October 2009, Implementing Provisions commenced 1 Feb 2010. The latest Patent Law as at 1 June 2021 is only available in Chinese at present.
  - Patent Office originally a division of State Administration for Industry & Commerce, however since 1998, under State Intellectual Property Office (SIPO), and now the China National Intellectual Property Administration (CNIPA).
  - See World Intellectual Property Organisation, WIPOLex page on China Patent Law for copies of the legislation.
- Patentable Subject Matter
  - Covers inventions, utility models (~ innovation patents), and designs. The patentability criteria for inventions and utility models are novelty, inventiveness and applicability (see article 22).
    - ‘Article 22: Inventions and utility models for which patent rights are to be granted shall be ones which are novel, creative and of practical use.
    - Novelty means that the invention or utility model concerned is not an existing technology; no patent application is filed by any unit or individual for any identical invention or utility model with the patent administration department under the State Council before the date of application for patent right, and no identical invention or utility model is recorded in the patent application documents or the patent documentations which are published or announced after the date of application.
    - Creativity means that, compared with the existing technologies, the invention possesses prominent substantive features and indicates remarkable advancements, and the utility model possesses substantive features and indicates advancements.
    - Practical use means that the said invention or utility model can be used for production or be utilized, and may produce positive results.
    - For the purposes of this Law, existing technologies mean the technologies known to the public both domestically and abroad before the date of application.’
  - For design patents, the patentability criteria require designs to be obviously distinguishable from existing designs (see article 23).
    - ‘Article 23: A design for which the patent right is granted is not an existing design, and no application is filed by any unit or individual for any identical design with the patent administration department under the State Council before the date of application for patent right and no identical design is recorded in the patent documentations announced after the date of application.
    - Designs for which the patent right is to be granted shall be ones which are distinctly different from the existing designs or the combinations of the features of existing designs.
    - Designs for which a patent right is granted shall be ones which are not in conflict with the lawful rights acquired by others prior to the date of application.
    - For the purposes of this Law, existing designs mean designs that are known to the public both domestically and abroad before the date of application.’
- SIPO Statistics on Patent Applications
  Intellectual Property Right
  1985 - 2009
  2010
  2014
  2015
  Patents Granted (Invention Patent)
  482,711
  135,110
  233,000
  359,000

Domestic
202,623
Foreign
280,088

Patent Applications Received

928,000
1,102,000
Utility Models Granted
1,200,918
344,472
708,000
876,000

Domestic
1,190,807
Foreign
10,111

Utility Model Applications Received

868,000
1,128,000
Designs Granted
914,275
335,243
362,000
483,000

Domestic
830,147
Foreign
84,128

Designs Applications Received

565,000
569,000
Total Patent Applications Examined

1,222,286
1,890,000
2,083,000
- See China National Intellectual Property Administration (CNIPA) for a wealth of regularly updated statistics about intellectual property in Chin
- As you can see from the statistics set out above, there has been a substantial increase in both patent applications and patents granted over recent years. This imposes a substantial administrative burden upon China in terms of ensuring that the patent office is equipped to process and examine the large volume of applications to avoid lengthy delays in processing applications. As discussed in Module 1 (1.27.1), reducing delays were one of the issues that was raised in the China-Australia Free Trade Agreement

Civil Law Protection of Patents
- Several Provisions of the Supreme People’s Court (SPC) on Issues Relating to Application of Law to Adjudication of Cases of Patent Disputes:
  - Disputes over right to apply for the patent, contracts for assignment of right to apply and ownership of the patent right
  - Disputes arising from patent infringement or from counterfeiting another’s patent
  - Disputes over the exploitation fee between the period of publication and grant of patent rights
  - Disputes over reward/remuneration of inventors/creators of service inventions
  - Pre-litigation requests for stopping infringement or for property preservation
  - Disputes over qualification of inventors/creators
  - Appeals from re-examination decisions by the Patent Re-examination Board re upholding rejection of applications or invalidation of a patent right
  - Appeals regarding the execution of compulsory licences and setting of royalties by the relevant administrative organ
  - Various other patent disputes
Chapter VII Patent Law of the People’s Republic of Chin
- Chapter VII of the Patent Law sets out provisions in relation to infringement proceedings. As set out in Article 60, infringement disputes should be settled by negotiation of the parties and failing that, legal proceedings made be instituted in the people’s court or the administrative authority for patent affairs may be requested to handle the matter.
  - Article 60: If a dispute arises as a result of exploitation of a patent without permission of the patentee, that is, the patent right of the patentee is infringed, the dispute shall be settled through consultation between the parties. If the parties are not willing to consult or if consultation fails, the patentee or interested party may take legal action before a people’s court, and may also request the administration department for patent-related work to handle the dispute. If, when handling the dispute, the said department believes the infringement is established, it may order the infringer to cease the infringement immediately; if the infringer is dissatisfied with the order, he may, within 15 days from the date of receipt of the notification of the order, take legal action before a people’s court in accordance with the Administrative Procedure Law of the People’s Republic of China. If the infringer neither takes legal action at the expiration of the time limit nor ceases the infringement, the said department may file an application with the people’s court for compulsory enforcement. The administration department for patent-related work that handles the call shall, upon request of the parties, carry out mediation concerning the amount of compensation for the patent right infringement. If mediation fails, the parties may take legal action before the people’s court in accordance with the Civil Procedure Law of the People’s Republic of China.
- Infringement actions must be instituted within 2 years of the date the patentee becomes or should have become aware of the infringing act in accordance with Article 6
  - Article 68: The period of limitation for action against patent right infringement shall be two years, commencing from the date when the patentee or interested party knows or should have known of the infringement
Jurisdiction of patent disputes
- First instance commence at Intermediate People’s Courts where foreign related case.
- Territorial jurisdiction is where the defendant is domiciled or the place where the infringement took place
Remedies of the Court where patentee is successful
- Order to desist the infringing act (injunction)
- Order for the infringer to make a public apology and promise not to infringe again
- Order to confiscate the infringing products, to destroy tools and material for manufacturing the infringing products
- Order the infringer to compensate the patentee for economic and other losses suffered.
Recent Patent Cases
- Bayer CropScience AG was successful in a patent infringement dispute with two Chinese companies over the infringement of its patent over Mefenpyr-diethyl, a chemical added to herbicides to protect crops. Result on appeal was an injunction, a public apology and compensation.
- ZTE Corp and Huawei Technologies Co Ltd have been embroiled in a variety of patent infringements cases against each other involving telecommunications equipment and 4 G technology.
- Meanwhile, Samsung Electronics Co has been ordered to pay 50 m yuan to Holley Communications in Zhejiang Prov for breach of the technology that enable mobiles to operate both on CDMA and GSM networks.
Trade Marks in China
- Trademark Law of the People’s Republic of China
  - Trademarks may be registered for goods and services and provides the owner of a registered trademark with the exclusive right o use the trademark (Article 3). Article 8 of the Trademark Law provides that any ‘signs, including words, graphs, letters, numbers, three-dimensional symbols, color combinations, sound or any combination thereof, that are capable of distinguishing the goods of a natural person, legal person or other organization from those of others may be applied for registration as trademarks.’
  - The Trademarks Law also provides for the registration of collective and certification trademarks.
    - Collective trademarks are ‘registered in the name of a group, association, or any other organization for use in business by its members to indicate membership’ (Article 3)
    - Certification trademarks are those marks that are ‘controlled by an organization which is capable of exercising supervision over a particular kind of goods or services and that is used by a unit other than the organization or by an individual for its or his goods or services, and is designed to certify the indications of the place of origin, raw materials, mode of manufacture, quality, or other specified properties of the said goods or services.’ (Article 3)
  - The Trademarks Law also provides for the recognition of well-known marks (see Article 13).
  - To view the legislation, visit the World Intellectual Property Organisation, WIPOLex page on the Trademark Law of the People’s Republic of China.
  - The latest version, however, takes into account amendments to April 23, 2019, and is avalable here.
- Trade mark registration
  - To be registered a trade mark must be distinctive. Article 9 of the Trademark Law states:
    - A trademark submitted for registration shall bear noticeable characteristics and be readily distinguishable, and it may not conflict with the legitimate rights obtained by others earlier.
    - A trademark registrant shall have the right to indicate the wording “Registered Trademark” or the sign showing that the trademark is registered.
  - The Government body responsible for administering the trade mark registration and enforcement system is the State Administration of Industry and Commerce and is achieved through the Trademark Office and the Trademark Review and Adjudication Board
  - When registering a trademark it is advisable to register the mark in the foreign language and in Chinese.
- Trade marks and consumer protection
  - Under the Trademarks Law, the users of a trade mark must maintain ‘the quality of the goods on which the trademark is used.’ (see Article 7)
  - Where the right to use a trade mark is licensed by the owner of the trade mark (the licensor) to another person (the licensee), it is the responsibility of the licensee to supervise the quality of the goods produced by the licensee and the licensee is required to guarantee the quality of the goods (article 43).
    - Article 43. The owner of a registered trademark may, by concluding a trademark licensing contract, authorize another person to use his registered trademark. The licensor shall supervise the quality of the goods on which the licensee uses his registered trademark, and the licensee shall guarantee the quality of the goods on which the registered trademark is to be used.
    - If any person is authorized to use the registered trademark of another person, the name of the licensee and the origin of the goods shall be indicated on the goods that bear the registered trademark.
    - A licensor who licenses others to use his registered trademark shall submit the trademark licensing to the trademark office for file, and the trademark office shall announce the trademark licensing. Without filing, the trademark licensing shall not be used against a bona fide third party.
  - It is interesting to note that these requirements on maintaining quality are less onerous than the past provisions in the now superseded Trademarks Law where a reduction in quality may have resulted in the cancellation of a trade mark registration (old article 45).
- Statistics on trade mark applications

2008
2014
2015
Trademark Applications
698,000
2,285,400
2,876,000
Trademark Examinations
750,000
2,426,400

Trademarks Granted
403,000

2,226,000
- Similar to the situation with patents, there has been significant growth in trade mark related activity in China with an increase in the number of applications, examinations and registrations in recent years.
- Statistics are available from National Intellectual Property Administration, PRC

Trade mark cases accepted by People’s Court
- Disputing re-examination decisions of the Trademark Review and Administration Board
- Disputing specific administrative actions by the SAIC/TMO
- Disputes over attribution of exclusive right to use trademarks
- Infringement of trade marks
- Contractual disputes over assignment of exclusive rights to use trademarks or trademark licences
- Applications for pre-trial cessation of infringement, pre-trial property preservation and pre-trial evidence preservation
Jurisdiction of trade mark cases
- Usually first instance is in the intermediate people’s courts but there is a possibility of the basic courts in larger cities to be used
- 2008 saw the trial of basic people’s courts in Shenzhen as the first instance court for smaller matters. This has expanded and traffic is high
- Article 60 of the Trademarks Law sets out provisions governing infringement proceedings. The parties should attempt to resolve an infringement dispute by consultation in the first instance however if this is not possible or consultation does not resolve the dispute legal proceedings may be commenced in the People’s Court or an action in the AIC.
Evidence in infringement cases
- As set out in Article 57, the following acts shall constitute an infringement on the exclusive rights to use a registered trademark:
  - Using a trademark that is identical with a registered trademark on the same kind of goods without obtaining licensing from the registrant of the registered trademark;
  - Using a trademark that is similar to a registered trademark on the same kind of goods, or using a trademark that is identical with or similar to the registered trademark on similar goods without obtaining licensing from the registrant of the registered trademark, and is likely to cause confusion;
  - Selling goods that infringe on the exclusive right to the use of a registered trademark;
  - Counterfeiting, or making without authorisation, representations of another person’s registered trademark, or selling such representations;
  - Altering a registered trademark without permission of its owner and selling goods bearing such an altered trademark on the market;
  - Providing intentionally, convenience for such acts as infringe upon others’ exclusive right of trademark use, to facilitate others to commit infringement on the exclusive right of trademark use;
  - Impairing in other manners another person’s exclusive right to the use of its registered trademark.
- Damages for infringement shall reflect the actually loss suffered by the owner of the trade mark as a result of the infringement. If it is difficult to determine the actual loss, the damages may be determined according to the profits obtained by the infringing party. If it is difficult to determine both the loss suffered by the rights holder and the profits gained by the infringing party, the amount of damages may be ‘reasonably determined in reference to multiples of the trademark for royalties.’ (See Article 63)
- Where it is difficult to determine the actual loss suffered by the rights holder, the profits of the infringing party or the royalties of the trademark, then the people’s court may award ‘damages in an amount not more than RMB three million yuan based on the circumstances of the infringing acts.’ (Article 63)
- Evidence of economic loss by the plaintiff or economic benefit by the infringer including fees for restraining the infringing acts. Where difficult to affirm then the court can resort to the statutory amount to a maximum RMB 500,000 where the infringement is most serious.
Examples of recent infringement actions
- Formula One Administration v 4 defendants being clothing manufacturers and the shopping mall through which the infringing items were sold
- Bausch & Lomb v Shanghai Yuantong Optical Co. Ltd on trade mark infringement and unfair competition
- GAP v 6 restauranteurs for infringement of trademark and unfair competition
- NEC (Nippon Electric Company Ltd) successfully sued 4 Chinese companies for TM infringement of “NEC” in relation to manufacturing and selling counterfeit keyboards and mice (RMB 1.15 m)
- Grohe AG sued Yuyao Jitai Sanitary Ware Co Ltd for manufacturing counterfeit sanitary fittings utilising the Grohe TMs (RMB 3.52 m).
- Criminal action in relation to the sale of counterfeit brand named shampoos resulting in 3 years imprisonment and a fine for Xu Jin.
- Star basketballer Yao Ming has filed a lawsuit against a local sportswear producer for name and portrait infringements
- Goldlion, a leather goods company is suing 6 franchised supermarkets for selling counterfeit goods under their brand seeking injunction & compensation
- In 2009, BMW successfully sued Shenzhen Century Baoma Apparel Co Ltd for infringement of trade mark – statutory damages only available due to lack of evidence re profits of infringer.
Copyright in China
- Copyright Law of the People’s Republic of China
  - The Copyright Law of the People’s Republic of China was introduced September 1990 and came into force 1 June 1991 for the ‘purpose of protecting the copyright of authors in the literary, artistic and scientific works and the rights and interests related to copyright, encouraging the creation and dissemination of works conducive to the building of a socialist society that is advanced ethically and materially, and promoting the progress and flourishing of socialist culture and sciences.’
  - The term ‘works’ is defined in Article 3 as including:
    - …among other things works of literature, art, natural sciences, social sciences, engineering and technology, which are created in any of the following forms:
      - (1) written works;
      - (2) oral works;
      - (3) musical, dramatic, quyi, choreographic and acrobatic works;
      - (4) works of the fine arts and architecture;
      - (5) photographic works;
      - (6) cinematographic works and works created by a process analogous to cinematography;
      - (7) graphic works such as drawings of engineering designs and product designs, maps and sketches, and model works;
      - (8) computer software; and
      - (9) other works as provided for in laws and administrative regulations.
  - The term of protection offered under the Copyright Law is for the life of the author plus 50 years (or just 50 years where the owner is a legal entity).
  - See Copyright Law of People’s Republic of China on the World Intellectual Property Organisation for the 2010 legislation which is available in English, WIPOLex website and more recent supplementary information.
  - The latest 1 June 2021 version has yet to be translated but will be available eventually here.
- Copyright Administration
  - The National Copyright Administration of China (NCAC) is responsible for the administration of copyright.
  - Since 2002, local administrations have the power to initiate action against infringers 2003 saw a number of special actions taken with 150,000 executive staff dispatched to investigate markets, enterprises and schools: 12.9m products seized resulting in fines and business closures.

2008
2014
2015
Copyright Registrations

1,211,300
1,641,200
Works copyrights

992,034
1,348,200
Software copyrights
49,087
218,783
292,400
Copyright cases (Local People’s Courts)
10,951
59,493
66,690
- Statistics from National Intellectual Property Administration, PRC, are no longer available. Subsequent IP reports focus on patents, trade marks, designs, GIs and Circuit Layouts. For the statistics from the 2020 annual report click here.

Copyright Enforcement
- Enforcement proceedings start at the administrative level and are often accompanied by criminal action - this is where the various administrations and Customs offices get involved.
- Civil actions usually commence in the Intermediate People’s Court where the case involves a foreign related matter. Local cases are dealt with in the District Courts e.g. Haidian District, Beijing).
- Damages need to be either quantified or rely on new statutorily mandated damages of up to Rmb 500,000 (see Article 49).
Remedies
- Procedures are available for temporary relief before commencement of civil procedures: akin to interlocutory injunctions, mareva injunctions and anton piller orders
- Administrative procedures may require the filing of a complaint providing details of the rights holder, their ownership and evidence of the infringement
- As set out in Article 48 of the Copyright Law, remedies for infringement include, depending on the circumstances:
  - ceasing the infringement;
  - eliminating the bad effects of the act;
  - making an apology; or
  - paying compensation for damages.
- Where public rights and interests are impacted, the administrative department for copyright may order:
  - the person to discontinue the infringement;
  - confiscate unlawful gains;
  - confiscate or destroy copies produced;
  - imposition of a fine
- Where the circumstances are serious, the administrative department for copyright may also confiscate the material, tools and instruments used to produce the copies.
2005 Copyright Infringement Statistics
- 9,644 cases with 97% resolved by copyright administrative authorities resulting in:
  - Administrative punishment (7,840)
  - Settlement agreement (1,174)
  - Transfers to judicial authorities (366)
  - 107m confiscated pieces of pirated products comprising books, magazines, audiovisual items, electronic publications, software discs etc
2010 Copyright Infringement Statistics
Item
The current year the number of
The current year the number of pirated goods

(Books, boxes, sheets, pieces)
The number of administrative penalties
(pieces)
10590
35,097,739
Transfer of cases (cases)
538,538
8,495,176
Check the number of operating units (a)
963,842
827,137
Ban illegal business unit of quantity (a)
61,995
545,627
Seized a number of underground dens ()
727,727
23,754,110
The penalty amount (RMB)
22,143,117
1,088,552

411,666

2014 Online Copyright Infringement
- 1650 reported civil opinions (+18.8%) on online infringement in 2014.
- Audiovisual cases 44.5 percent
- Literary works constituted 390 cases, or 23.6%. This was an increase of six times over last year.
- Graphical works were 363 cases, a 3.3 times increase.
- Video games totalled 56 cases
- Music totalled 20 cases (-80%), or about 1 percent, a decrease from last year of 80 percent.
Court Jurisdiction
- Civil disputes to commence in the Intermediate People’s Court although certain High People’s Courts can permit action of first instance in certain basic level courts.
- As a general rule the civil proceedings ought to commence in the locality of the infringing acts
Cases accepted by the People’s Court
- Cases concerning relevant interests and ownership, infringement and contractual disputes regarding copyright
- Applications to stop infringing acts together with the pre-trial procedures to preserve evidence and property etc
Examples of Copyright Cases
- Jean Paul Gaultier v Jiaru Fine Commodity Chemicals Co. Ltd found a breach of the copyright in the Gaultier perfume bottles
- Warner Music Hong Kong Limited v Beijing Yihe party World Entertainment Co. Ltd found the showing of works without permission an infringement of copyright.
- ETS and GMAC v Beijing New Oriental Language School held the copying of exam papers and their course materials to be an infringement of copyright
Intellectual Property Action Plan
- China’s Action Plan on IPR Protection 2009
  - Objective: ‘To give a comprehensive, systematic elaboration of the key measures Chinese government has taken for IPR protection in 2009, member agencies of the Inter-agency Joint Meeting for Implementation of the National IP Strategy, in compliance with working schedule of the meeting, are pleased to present this Action Plan on IPR Protection for 2009, which details 170 measures in 9 areas.’
  - These nine areas are:
    - Legislation. Measures include:
      - Draft, formulate and revise patent laws and regulations
      - Draft, formulate and revise trademark and copyright laws and regulations
      - Draft, formulate and revise other IP laws, regulations and rules (e.g. customs protection, unfair competition, trade secrets)
      - Draft and formulate judicial interpretation in relation to intellectual property proceedings
    - Enforcement. Measures include:
      - Coordinate and organise special campaigns on IP enforcement (e.g. Campaign Thunderstorm on patent infringement and counterfeiting, Campaign Skynet on patent fraud, special operations on on-line copyright infringement)
      - Further ensure day-to-day enforcement of intellectual property rights
    - Trials. Measures include:
      - Establishment by local courts of IP tribunals that handle civil, administrative and criminal intellectual property cases
      - Set up independent IP tribunals at the Supreme People’s Court, high people’s courts, intermediate people’s courts for civil IP cases
    - Institutional building. Measures include:
      - Develop mechanisms for inter-agency coordination and regional interaction
      - Strengthen intellectual property administration
    - Publicity. Measures include:
      - Carry out publicity campaigns on intellectual property rights including large scale publicity campaigns, hosting forums and symposiums, producing and disseminating publicity materials
    - Training and education. Measures include:
      - Training of judicial professionals including local public security officers, IP criminal enforcement officers, customs enforcement officers
      - Revise compulsory education curriculum standards with the aim to integrate IP content into the Standards for Ethical Education
    - International exchange and cooperation. Mechanisms include:
      - Establish and improve intellectual property information communication and exchange and enhance international cooperation with organisations such as the World Intellectual Property Organisations
      - Maintain and develop existing bilateral and multilateral cooperation mechanisms in relation to intellectual property
    - Corporate IP protection. Mechanisms include:
      - Conduct IP pilot demonstration projects, promote strategic pilots within enterprises and entities
      - Assist enterprises in IP issues when participating in overseas exhibitions
      - Carry out the Implementation Plan for Overseas IP Enforcement Mechanisms
    - Services for rights holders. Mechanisms include:
      - Improving IP public service
      - Developing IP intermediary services
  - The links to the 2009 and subsequent action plans are no longer available.
  - Think about how this approach differs to Australian approaches to intellectual property. Are the concerns similar to those expressed by the Productivity Commission in its 2016 report on Intellectual Property Arrangements?
Research and development in China
- Research and Development (R&D) – OECD Report 2008
  - China spends as much as Germany on R&D, and accounts for a similar share in worldwide science and technology publications.
  - Yet China lags in innovation capability and performance compared to OECD countries with similar R&D investment.
  - Foreign investment in R&D has grown very rapidly in recent years and plays a significant role in China’s national innovation system.
- Recent attempts to improve domestic innovation
  - The latest development in China’s innovation strategy is a policy to give preference to ‘self-innovation products’ in government procurement.
  - For products to be able to use the term ‘self-innovation products’, they must contain locally owned intellectual property rights.
  - This means that products developed in China but by a foreign owned enterprise would not qualify, a matter of considerable concern for foreign technology producers.
- Technology Transfer
  - Contract Law of China sets out the basic principles applicable to technology-related contracts.
  - According to Technology Transfer Regulations, technology is divided into three categories: freely transferable; restricted; and prohibited technology.
- Tax Preferential Treatment
  - Tax concessions are available to incentivise research and development.
  - Accelerated deductions, referred to as “super deductions”, are allowed under for expenditure relating to research and development expenses
  - Accelerated depreciation may be applied against fixed asset investment where those assets pertain to technological advancements
  - Industries and projects specifically supported or encouraged by the State will be granted preferential tax treatment
  - The Enterprise Income Tax may be reduced or exempted for enterprises earning income from… prescribed environmental protection, energy and water conservation projects and from prescribed transfer of technology
ChAFTA and Chapter 11
- Article 11.1: Purpose And Principles
  - The purpose of this Chapter is to increase the benefits from trade and investment through the protection and enforcement of intellectual property rights:
    - transparent intellectual property systems - adequate and effective protection and enforcement;
    - promote technological innovation and its transfer/dissemination;
    - promote economic and social development and reduce distortion and obstruction to international trade;
    - open, innovative and efficient markets while providing appropriate balance between the legitimate interests of rights holders, users and the public interest
    - not be a barrier to trade, may require measures to avoid abuse of rights/anticompetitive conduct provided consistent with TRIPS & IP Chapter
    - appropriate measures to protect public health and nutrition may be adopted provided they are consistent with the TRIPS Agreement and the IP Chapter
- ARTICLE 11.3: OBLIGATIONS ARE MINIMUM OBLIGATIONS
  - Each Party shall, at a minimum, give effect to the provisions of this Chapter. A Party may, but shall not be obliged to, provide more extensive protection for, and enforcement of, intellectual property rights than this Chapter requires, provided that this additional protection and enforcement is not inconsistent with the provisions of this Agreement. Each Party shall be free to determine the appropriate method of implementing the provisions of this Chapter within its own legal system and practice.
- ARTICLE 11.4: INTERNATIONAL AGREEMENTS
  - Each Party affirms its commitment to the TRIPS Agreement and any other multilateral agreement relating to intellectual property to which both Parties are party.
- ARTICLE 11.5: NATIONAL TREATMENT
  - 1. In respect of intellectual property rights covered in this Chapter, each Party shall accord to nationals of the other Party treatment no less favourable than it accords to its own nationals with regard to the protection of such intellectual property rights, subject to the exceptions provided under the TRIPS Agreement and those multilateral agreements concluded under the auspices of WIPO to which the Parties are party.
  - 1. For the purposes of this Article, “protection” includes matters affecting the availability, acquisition, scope, maintenance and enforcement of intellectual property rights, as well as those matters affecting the use of intellectual property rights covered by this Chapter.
  - 1. A Party may derogate from paragraph 1 in relation to its judicial and administrative procedures, including requiring a national of the other Party to designate an address for service in its territory, or to appoint an agent in its territory, provided that such derogation is:
    - (a) necessary to secure compliance with laws and regulations that are not inconsistent with this Chapter; and
    - (b) not applied in a manner that would constitute a disguised restriction on trade.
  - 1. Paragraph 1 shall not apply to procedures provided in multilateral agreements to which either Party is a party concluded under the auspices of the WIPO in relation to the acquisition or maintenance of intellectual property rights.
- ChAFTA & Patents
  - Confirmation of the TRIPS Protocol and Public Health: Art. 11.7
  - Patent Applications to be provided with opportunities to amend, correct etc their applications in accordance with the patent laws, regulations and rules of each party: Art. 11.10
  - Patent applications to be published after the expiry of 18 from filing: Art. 11:11
- ChAFTA & PBR
  - ARTICLE 11.16: PLANT BREEDERS’ RIGHTS
    - The Parties, through their competent agencies, shall cooperate to encourage and facilitate the protection and development of plant breeders’ rights with a view to:
      - (a) better harmonising the plant breeders’ rights administrative systems of both Parties, including enhancing the protection of species of mutual interest and exchanging information;
      - (b) reducing unnecessary duplicative procedures between their respective plant breeders’ rights examination systems; and
      - (c) contributing to the reform and further development of the international plant breeders’ rights laws, standards and practices, including within the South East Asian region.
- ChAFTA, Genetic Resources, TK & TCEs
  - ARTICLE 11.17: GENETIC RESOURCES, TRADITIONAL KNOWLEDGE AND FOLKLORE
    - 1. Subject to each Party’s international obligations and its laws, the Parties may establish appropriate measures to protect genetic resources, traditional knowledge and folklore.
    - 1. The Parties agree to further discuss relevant issues concerning genetic resources, traditional knowledge and folklore, taking into account future developments in their respective laws and in multilateral agreements.
- ChAFTA & Trade Marks
  - ARTICLE 11.12: TYPES OF SIGNS AS TRADE MARKS
    - The Parties agree to cooperate on the means to protect types of signs as trade marks, including visual and sound signs.
  - ARTICLE 11.13: CERTIFICATION AND COLLECTIVE TRADE MARKS
    - Each Party shall provide for the protection of both collective and certification trade marks.
  - ARTICLE 11.14: WELL-KNOWN TRADE MARKS
    - The Parties shall provide protection for well-known trade marks at least in accordance with Article 16.2 and 16.3 of the TRIPS Agreement and Article 6 bis of the Paris Convention for the Protection of Industrial Property, done at Paris on 20 March 1883.
  - ARTICLE 11.15: GEOGRAPHICAL INDICATIONS
    - Each Party recognises that geographical indications may be protected through a trade mark or sui generis system or other legal means.
- ChAFTA and Copyright
  - ARTICLE 11.19: COLLECTIVE MANAGEMENT OF COPYRIGHT
    - Each Party shall foster the establishment of appropriate bodies for the collective management of copyright and shall encourage such bodies to operate in a manner that is efficient, publicly transparent and accountable to their members.
  - ARTICLE 11.20: SERVICE PROVIDER LIABILITY
    - Each Party may take appropriate measures to limit the liability of, or remedies available against, internet service providers for copyright infringement by the users of their online services or facilities, where the internet service providers take action to prevent access to the materials infringing copyright in accordance with the laws and regulations of the Party.
- ChaFTA & Enforcement
  - ARTICLE 11.21: ENFORCEMENT
    - 1. Each Party commits to implementing effective intellectual property enforcement systems with a view to eliminating trade in goods and services infringing intellectual property rights.
    - 1. Each Party shall provide for criminal procedures and penalties in accordance with the TRIPS Agreement to be applied at least in cases of wilful trademark counterfeiting or copyright piracy on a commercial scale. Remedies available shall include imprisonment and/or monetary fines sufficient to provide a deterrent, and consistent with the level of penalties applied for crimes of a corresponding gravity.
- ChAFTA – Art. 11.22: Border Measures
  - 1. Each Party shall ensure that the requirements necessary for a right holder to initiate procedures to suspend the release of goods suspected of being counterfeit trade mark or pirated copyright goods shall not unreasonably deter recourse to these procedures.
  - 1. Where its competent authorities have made a determination that goods are counterfeit trade mark or pirated copyright goods (or have detained such suspected goods), each Party shall provide that its competent authorities have the authority to inform the right holder of at least the names and addresses of the consignor and the consignee, and of the quantity of the goods in question.
  - 1. Each Party shall provide that its customs authorities may initiate border measures ex officio with respect to imported or exported goods suspected of being counterfeit trade mark or pirated copyright goods.
  - 1. Each Party shall ensure that its laws, regulations or policies permit relevant competent authorities, on receipt of information or complaints, to take measures in accordance with its laws to prevent the export of counterfeit trademark or pirated copyright goods.
  - 1. The Parties may exclude from the application of this Article the importation or exportation of small quantities of goods which are considered to be of a non-commercial nature.
- Cooperation
  - ARTICLE 11.23: COOPERATION – GENERAL
    - 1. Each Party shall, on request of the other Party, exchange information:
      - (a) relating to intellectual property policies in their respective administrations;
      - (b) on changes to, and developments in the implementation of, their national intellectual property systems; and
      - (c)on the administration and enforcement of intellectual property rights.
  - ARTICLE 11.24: CONSULTATIVE MECHANISM: COMMITTEE ON INTELLECTUAL PROPERTY
    - 1. For the purposes of the effective implementation and operation of this Chapter, the Parties hereby establish a Committee on Intellectual Property (“the Committee”).

Week 5: Biodiversity and IPR

Biodiversity and IPR
- why is IP important to biological diversity?
  - Biodiversity and related ecosystem services have significant value for local communities in terms of livelihoods and health, sustainable development, industry and the global economy. As you watch this interview, think about these key questions:
    - How can intellectual property assist (indirectly or directly) in the sustainable use and conservation of biodiversity?
    - How can WIPO assist countries in reaching their strategic plans in regards to biodiversity?
Intellectual Property and the Convention on Biological Diversity (CBD)
- The Convention on Biological Diversity (CBD) came into operation in 1993 with the following objectives (as set out in Article 1):
  - the conservation of biological diversity
  - the sustainable use of the components of biological diversity; and
  - the fair and equitable sharing of benefits arising out of the utilisation of genetic resources including by appropriate access to genetic resources and by appropriate transfer of relevant technologies, taking into account all rights over those resources and to technologies, and by appropriate funding.
- The third objective of the CBD specifically requires that all rights over the genetic resources be taken into account when determining the fair and equitable sharing of benefits arising from the use of those resources.The question of ‘all rights’ requires identifying the different stakeholders in such resources. Such stakeholders might be the sovereign nations themselves, landowners and indigenous peoples, bioprospectors, pharmaceutical or biotechnology companies or holders of intellectual property over such resources.
  - This provision may be contrasted with Article 3 of the CBD which provides that States have the sovereign right to exploit their own resources.
  - The CBD provides a framework for regulating access to and sharing the benefits arising out of genetic resources drawing on the principles of prior informed consent and mutually agreed terms.
  - The intersection between the CBD and intellectual property rights is recognised in article 16.5 which states:
    - The Contracting Parties, recognising that patent and other intellectual property rights may have an influence on the implementation of this Convention, shall cooperate in this regard subject to national legislation and international law in order to ensure that such rights are supportive of and do not run counter to its objectives.
CBD: Ownership, access, benefits and IP
- CBD and ownership
  - Ownership
    - Article 3:
      - “States have, in accordance with the Charter of the United Nations and the principles of international law, the sovereign right to exploit their own resources…”
- CBD and Access
  - Access
    - Article 15 paragraph 1:
      - “Recognizing the sovereign rights of States over their natural resources, the authority to determine access to genetic resources rests with the national governments and is subject to national legislation”
  - Defining Resources
    - Biological resources include
      - genetic resources, organisms, parts of organisms, populations and any other biotic component of an ecosystem with actual or potential use or value for humanity (CBD)
    - Genetic resources include
      - genetic material of actual or potential value (CBD)
    - Genetic material includes
      - any material of plant, animal, microbial or other origin containing functional units of heredity
  - Accessing genetic resources
    - Article 15 paragraph 4
      - Access to genetic resources are subject to “mutually agreed terms”
    - Article 15 paragraph 5
      - Such access “shall be subject to prior informed consent of the Contracting Party providing such resources”
- CBD and benefits
  - Sharing R&D and commercial use
    - Article 15 paragraph 7 requires each contracting party:
      - Shall take legislative, administrative or policy measures …with the aim of sharing in a fair and equitable way the results of research and development and the benefits arising from the commercial and other utilization of genetic resources with the Contracting Party providing such resources. Such sharing shall be upon mutually agreed terms”
  - Sharing of Benefits
    - Article 16 paragraph 1
      - “Each Contracting Party … undertakes … to provide and/or facilitate access for and transfer to other Contracting Parties of technologies that are relevant to the conservation and sustainable use of biological diversity or make use of genetic resources and do not cause significant damage to the environment.”
    - Article 16 paragraph 4
      - “Each Contracting Party shall take legislative, administrative or policy measures…with the aim that the private sector facilitates access to joint development and transfer of technology… for the benefit of both governmental institutions and the private sector of developing countries”
- Patent cooperation treaty and other patent treaties
  - Recognising Intellectual Property
    - Article 16 paragraph 5:
      - “The Contracting Parties, recognizing that patent and other intellectual property rights may have an influence on the implementation of this Convention, shall cooperate in this regard subject to national legislation and international law in order to ensure that such rights are supportive of and do not run counter to its objectives”
CBD and TRIPS: Is there conflict?
- If there is a conflict between the terms of the CBD and the TRIPS Agreement?
  - 1. Compare the objectives of the CBD and those of the TRIPS Agreement.
    - The CBD is concerned with the conservation and sustainable use of biodiversity and the fair and equitable sharing of benefits arising out of the utilisation of genetic resources (Article 1). Access and benefit sharing must be subject to prior informed consent and upon mutually agreed terms. In recognition of the importance of intellectual property to the issues set out in the CBD, article 15.6 requires member countries to cooperate (subject to national legislation and international law) to ensure that intellectual property rights are supportive of and do not run counter to the objectives of the CBD.
    - By contrast, in accordance with Article 7, the TRIPS Agreement focuses on the protection and enforcement of intellectual property rights and the role intellectual property rights play in the ‘promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.’
    - Note, however, that both agreements refer to the idea of mutual advantage or mutually agreed terms.
  - 1. State Sovereignty and Private Rights
    - The CBD recognises state sovereignty over resources where the TRIPS Agreement allows for the creation of private rights, in the form of patent rights, over ‘any invention, whether products or processes, in all fields of technology provided that they are new, involve an inventive step and are capable of industrial application… patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced.’ (see article 27.1)
    - However, as discussed earlier in the subject, there are exclusions from the patentability under the TRIPS Agreement as set out in articles 27.2 and 27.3.
  - TRIPS Art. 27.2
    - Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law.
  - TRIPs Art. 27.3
    - Members may also exclude from patentability:
      - (a) diagnostic, therapeutic and surgical methods for the treatment of humans or animals;
      - (b) plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes…
- 1. Access and Benefit Sharing and Private Rights
  - Another area for potential conflict, the ability to grant private rights in the form of patents over inventions that include genetic resources may undermine the provisions of the CBD that require access be subject to prior informed consent of the resource holder or knowledge holder and then upon mutually agreed terms. There are no similar obligations under the TRIPS Agreement and no requirement to disclose in any patent application that prior informed consent has been obtained and that mutually agreed terms have been entered into.
  - In order to promote consistency between the two agreements, a group of like minded countries have called for amendments to the TRIPS Agreement to require patent applications to source the origin of genetic resources and to provide evidence of prior informed consent and mutually agreed terms. The amendment would be to include a new article 29bis as follows:
    - Article 29bis Disclosure of Origin of Genetic Resources and/or Associated Traditional Knowledge
      - For the purposes of establishing a mutually supportive relationship between this Agreement and the Convention on Biological Diversity, Members shall have regard to the objectives, definitions and principles of this Agreement, the Convention on Biological Diversity, and the Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from their Utilization, in particular its provisions on prior informed consent for access and fair and equitable benefit sharing.
      - Where the subject matter of a patent application involves utilization of genetic resources and/or associated traditional knowledge, Members shall require applicants to disclose:
        
        (i) the country providing such resources, that is, the country of origin of such resources or a country that has acquired the genetic resources and/or associated traditional knowledge in accordance with the CBD; and,
        
        (ii) the source in the country providing the genetic resources and/or associated traditional knowledge. Members shall also require that applicants provide a copy of an Internationally Recognized Certificate of Compliance (IRCC).
      - If an IRCC is not applicable in the providing country, the applicant should provide relevant information regarding compliance with prior informed consent and access and fair and equitable benefit sharing as required by the national legislation of the country providing the genetic resources and/or associated traditional knowledge, that is, the country of origin of such resources or a country that has acquired the genetic resources and/or associated traditional knowledge in accordance with the CBD.
      - Members shall publish the information disclosed in accordance with paragraph 2 of this Article jointly with the publication of the application or the grant of patent, whichever is made first.
      - Members shall put in place appropriate, effective and proportionate measures so as to permit effective action against the non-compliance with the obligations set out in paragraph 2 of this Article. Patent applications shall not be processed without completion of the disclosure obligations set out in paragraph 2 of this Article.
      - If it is discovered after the grant of a patent that the applicant failed to disclose the information set out in paragraph 2 of this Article, or submitted false and fraudulent information, or it is demonstrated by the evidence that the access and utilization of genetic resources and/or associated traditional knowledge violated the relevant national legislation of the country providing genetic resources and/or associated traditional knowledge, that is, the country of origin of such resources or a country that has acquired the genetic resources and/or associated traditional knowledge in accordance with the CBD, Members shall impose sanctions, which may include administrative sanctions, criminal sanctions, fines and adequate compensation for damages. Members may take other measures and sanctions, including revocation, against the violation of the obligations set out in paragraph 2.
  - See Submission by Brazil, China, Colombia, Ecuador, India, Indonesia, Peru, Thailand, the ACP Group and the African Group, ‘Draft decision to enhance mutual supportiveness between the TRIPS Agreement and the Convention on Biological Diversity’ WTO Doc TN/C/W/59 (19 April 2011).
  - Countries opposed to disclosure of origin provisions argue that the proposed amendment introduces new substantive patent law requirements in conflict with article 27 of the TRIPS Agreement and that the consequences for failing to comply with such requirements are too harsh. Supporters of the disclosure of origin provisions claim that they do not impact on the availability of patent rights but rather provide for ‘reasonable procedures and formalities’ that are allowable under article 62 of the TRIPS Agreement.
- 1. How do you deal with conflicts between treaties?
  - In accordance with international law, the latter treaty prevails where there is a conflict between two treaties dealing with the same subject matter (see article 30 of the Vienna Convention on the Law of Treaties). Keep in mind that the TRIPS Agreement came into force in 1995 whereas the CBD entered into force in 1993.
  - However, Jonathan Curci in considering the patentability of biotechnology concludes that, despite the potential for overlap between the CBD and article 27 of the TRIPS Agreement, the CBD and TRIPs concern different subject matter and therefore ‘States should fully and simultaneously implement both of them.’ (See Curci, 2005 page 14).
- So what does this all mean?
  - The 2001 Doha Declaration required the TRIPS Council to review the relationship between the TRIPS Agreement, the Convention on Biological Diversity and the protection of traditional knowledge. Work in this area has stalled. For more information see: World Trade Organisation, Article 27.3b, traditional knowledge, biodiversity.
Bioprospecting
- Defining Bioprospecting
  - Bioprospecting has been defined by the Commonwealth-State Working Group as “the collection and assay of samples of biological material for scientific, conservation or commercial purposes, including the identification of potentially valuable compounds or attributes (such as genes, foods, disease resistant plants, biologically active substances etc)”
  - The term ‘bioprospecting’ should not be confused with ‘biopiracy’ which is defined as the ‘appropriation of knowledge and genetic resources of farming and indigenous communities by individuals or institutions who seek exclusive monopoly control (patents or intellectual property) over these resources or knowledge.’ (ETC Group, Patents & Biopiracy.)
- Developing Technologies from Bioprospecting
  - Technology arising out of bioprospecting or biodiscovery activities often has applications in the biotechnology, pharmaceutical and agribusiness industries. Such technology may be eligible subject matter for intellectual property rights protection such as patents, plant breeder’s rights and confidential information.
- The Right to Exploit
  - Bioprospecting raises issues regarding the ownership of biological resources; ownership of resulting technologies and the extent to which legislative intervention may be necessary to regulate access to and ownership of biological resources and resulting technologies.
  - As discussed earlier in this module, there are a number of stakeholders who may be considered to have ownership rights in biological resources including sovereign nations themselves, landowners and Indigenous peoples, bioprospectors, pharmaceutical or biotechnology companies and the holders of intellectual property over such resources.
  - Ownership of any technologies resulting from bioprospecting is typically linked to the parties that engaged in developing the technology and the owner of the biological resource does not necessarily have any rights in resulting technology especially where they do not participate in the research and development process. This raises the question as to whether legislative intervention is required to recognise the contribution made by the owner of the biological resource in granting access.
  - While access and benefit sharing arrangements (in the form of contracts) may be entered into voluntarily outside of any legislative framework there is nothing in place to compel bioprospectors to enter into arrangements with resource holders. This is where a legislative framework may be used to compel bioprospectors to enter into contractual arrangements with resource holders covering terms and conditions relating to access and benefit sharing.
- Sharing of Benefits and Technology Transfer
  - The Bonn Guidelines, and later the Nagoya Protocol, have provided examples of what may constitute ‘benefits’ for the purpose of access and benefit sharing arrangements in relation to genetic resources and associated knowledge.
  - As set out in the Annex to the Nagoya Protocol, benefits may be divided into two broad categories: monetary, and non-monetary. The Annex to the Nagoya Protocol provides a non-exhaustive list of what may fall into each category.
  - Monetary benefits may include the following:
    - access fees
    - up-front payments
    - milestone payments
    - royalties
    - licence fees
    - funds paid into trust
    - salaries
    - research funding
    - joint ventures
    - joint ownership of intellectual property rights
  - Non-monetary benefits may include:
    - sharing results of research and development activities
    - collaboration and cooperation in scientific research and development
    - participation in product development
    - collaboration and cooperation in education training
    - access to ex situ facilities of genetic resources and to databases
    - technology transfer to the providing country, in particular, knowledge and technology that make use of the genetic resources or are relevant to conservation and sustainable use of biological diversity
    - capacity building - technology transfer; institutions; human and material resources for administration and enforcement of access regulations
    - training
    - access to information
    - contributions to local economies
    - research directed to priority needs of the providing country
    - joint ownership of intellectual property right
The Nagoya Protocol
- The Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising out of their Utilisation to the Convention on Biological Diversity was adopted on 29 October 2010 and entered into force on 12 October 2014.
- Objectives
  - The objective of the Nagoya Protocol is: ‘the fair and equitable sharing of the benefits arising from the utilization of genetic resources, including by appropriate access to genetic resources and by appropriate transfer of relevant technologies, taking into account all rights over those resources and to technologies, and by appropriate funding, thereby contributing to the conservation of biological diversity and the sustainable use of its components.’ (see Article 1).
  - The Protocol is designed to provide greater legal certainty and transparency for both providers and users of genetic resources.
- Support Compliance
  - Importantly the Protocol provides specific provisions to support compliance with domestic legislation or regulatory requirements of a party providing genetic resources and contractual obligations reflected in mutually agreed terms.
    - Article 15.1: Each Party shall take appropriate, effective and proportionate legislative, administrative or policy measures to provide that genetic resources utilized within its jurisdiction have been accessed in accordance with prior informed consent and that mutually agreed terms have been established, as required by the domestic access and benefit-sharing legislation or regulatory requirements of the other Party.
- Access to Genetic Resources
  - The compliance provisions mentioned above as well as provisions establishing more predictable conditions for access to genetic resources will contribute to ensuring the sharing of benefits when genetic resources leave a providing Party.
  - Article 6. Access to Genetic Resources
    - 1. In the exercise of sovereign rights over natural resources, and subject to domestic access and benefit-sharing legislation or regulatory requirements, access to genetic resources for their utilization shall be subject to the prior informed consent of the Party providing such resources that is the country of origin of such resources or a Party that has acquired the genetic resources in accordance with the Convention, unless otherwise determined by that Party.
    - 1. In accordance with domestic law, each Party shall take measures, as appropriate, with the aim of ensuring that the prior informed consent or approval and involvement of indigenous and local communities is obtained for access to genetic resources where they have the established right to grant access to such resources.
    - 1. Pursuant to paragraph 1 above, each Party requiring prior informed consent shall take the necessary legislative, administrative or policy measures, as appropriate, to:
      - (a) Provide for legal certainty, clarity and transparency of their domestic access and benefit-sharing legislation or regulatory requirements;
      - (b) Provide for fair and non-arbitrary rules and procedures on accessing genetic resources;
      - (c) Provide information on how to apply for prior informed consent;
      - (d) Provide for a clear and transparent written decision by a competent national authority, in a cost-effective manner and within a reasonable period of time;
      - (e) Provide for the issuance at the time of access of a permit or its equivalent as evidence of the decision to grant prior informed consent and of the establishment of mutually agreed terms, and notify the Access and Benefit-sharing Clearing-House accordingly;
      - (f) Where applicable, and subject to domestic legislation, set out criteria and/or processes for obtaining prior informed consent or approval and involvement of indigenous and local communities for access to genetic resources; and
      - (g) Establish clear rules and procedures for requiring and establishing mutually agreed terms.
- Access to Traditional Knowledge Associated with Genetic Resources
  - In addition, the Protocol’s provisions on access to traditional knowledge held by Indigenous and local communities when it is associated with genetic resources will strengthen the ability of these communities to benefit from the use of their knowledge, innovations and practices.
    - Article 7. Access to Traditional Knowledge Associated with Genetic Resources. In accordance with domestic law, each Party shall take measures, as appropriate, with the aim of ensuring that traditional knowledge associated with genetic resources that is held by indigenous and local communities is accessed with the prior and informed consent or approval and involvement of these indigenous and local communities, and that mutually agreed terms have been established.
- Cross Border Ownership and Benefit Sharing
  - There is a potential for disputes to arise over ownership and benefit sharing where genetic resources and associated knowledge are located across territorial borders or where different communities each claim ownership of a particular resource or knowledge. The Nagoya Protocol attempts to address this issue by proposing the establishment of a global multilateral benefit sharing mechanism. Article 10 of the Nagoya Protocol states:
    - Parties shall consider the need for and modalities of a global multilateral benefit-sharing mechanism to address the fair and equitable sharing of benefits derived from the utilization of genetic resources and traditional knowledge associated with genetic resources that occur in transboundary situations or for which it is not possible to grant or obtain prior informed consent. The benefits shared by users of genetic resources and traditional knowledge associated with genetic resources through this mechanism shall be used to support the conservation of biological diversity and the sustainable use of its components globally.
  - Work is continuing on determining how such a global multilateral benefit sharing mechanism would operate and you can find out more information on the Nagoya Protocol website.
Current debates
- Current debates in IP and Biodiversity
  - In addition to the debates regarding whether the TRIPS Agreement and Convention on Biological Diversity are in conflict or mutually supportive, there are other areas of debate in intellectual property and biodiversity.
- 1. Patentability of Life Forms
  - There has been significant debate on whether or not life forms, such as animals, plants, micro-organisms and genes, should be patentable and whether article 27.3 of the TRIPS Agreement should be amended. A number of arguments are raised in support of this debate:
    - Plants and animals are products of nature and are thus not inventive and should not be patentable
    - It is morally wrong to patent life
    - Allowing the grant of intellectual property rights over life forms involves transferring the common heritage of mankind into private ownership
  - On the other hand, supporters of patent rights argue that patent rights are only granted over those inventions that meet the requirements of being new, inventive and capable of industrial application and that these patents are necessary to reward investment and innovation in developing new transgenic plants and animals or in identifying gene sequences used in diagnosis and treatment of illness.
- 1. Disclosure of Origin requirements in patent applications
  - As discussed on page 5.6, some countries have introduced a proposed amendment to the TRIPS Agreement requiring patent applications to include a disclosure of source and origin country of genetic resources used in an invention along with evidence of prior informed consent and mutually agreed terms. Failure to comply with these proposed requirements could result in fines, penalties, refusal of an application or revocation of a granted patent.
  - The United States of America oppose these types of disclosure requirements arguing that they create uncertainty and administrative burden and ‘may undermine the role of the delicately balanced patent system in its primary purpose of encouraging innovation, technological progress and economic development.’ (See Communication from the Untied States, Article 27.3(b), Relationship between the TRIPS Agreement and the CBD, and the Protection of Traditional Knowledge and Folklore, WTO Doc IP/C/W/434 (26 November 2004) page 1). Instead, the United States of America argues that contract law is an appropriate tool for regulating access and benefit sharing (as opposed to the patent system).
- What do you think: is life patentable? Do you agree with US arguments against Disclosure of Origin requirements?
Other Biodiversity regimes
- Take a look at the following two regimes and how they have tackled the issues:
  - Pacific Regional Framework & Model Law re protection of Traditional Knowledge and Expressions of Culture
  - Andean Pact Decision 391 Common System on Access to Genetic Resources
What is traditional knowledge?
- Traditional knowledge
  - There is no universally accepted definition of traditional knowledge however various attempts have been made at an international level to define the concept.
    - The Convention on Biological Diversity refers to the ‘knowledge, innovations and practices of indigenous and local communities embodying traditional lifestyles’ with such knowledge being collectively owned and passed down from generation to generation. (See article 8(j) and CBD Traditional Knowledge Information Portal)
  - The World Intellectual Property Organisation (WIPO) has historically used the term ‘traditional knowledge’ to refer to
    - tradition-based literary, artistic or scientific works; performances; inventions; scientific discoveries; designs; marks; names and symbols; undisclosed information; and all other tradition-based innovations and creations resulting from intellectual activity in the industrial, scientific, literary or artistic fields… Categories of traditional knowledge could include: agricultural knowledge; scientific knowledge; technical knowledge; ecological knowledge; medicinal knowledge, including related medicines and remedies; biodiversity-related knowledge; ‘expressions of folklore’ in the form of music, dance, song, handicrafts, designs, stories and artwork; elements of languages, such as names, geographical indications and symbols; and, movable cultural properties. Excluded from this description of TK would be items not resulting from intellectual activity in the industrial, scientific, literary or artistic fields, such as human remains, languages in general, and other similar elements of ‘heritage’ in the broad sense.
    - (See World Intellectual Property Organisation, Intellectual Property Needs and Expectations of Traditional Knowledge Holders: WIPO Report on Fact-Finding Missions on Intellectual Property and Traditional Knowledge 1998-1999 (April 2001) 25).
  - More recently, WIPO has distinguished between ‘traditional knowledge’ and ‘traditional cultural expressions’. Traditional knowledge includes ‘knowledge, know-how, skills and practices that are developed, sustained and passed on from generation to generation within a community, often forming part of its cultural or spiritual identity.’ WIPO defines ‘traditional cultural expressions’ as including artistic, literary and cultural expressions such as music, dance, art, performances and ceremonies.
    - To find out more about how WIPO defines traditional knowledge visit:
      - World Intellectual Property Organisation, Traditional Cultural Expressions.
      - World Intellectual Property Organisation, Traditional Knowledge.
- Other terms
  - There are a number of other terms that have been used to refer to ‘traditional knowledge’ such as ‘Indigenous cultural and intellectual property’, ‘Indigenous knowledge’, ‘traditional ecological knowledge’, ‘Indigenous innovation’, and ‘folklore’.
- ‘Indigenous cultural and intellectual property’
  - Terri Janke refers to ‘Indigenous cultural and intellectual property’ in her ground-breaking work, Our Culture: Our Future (1999) and identifies the following features of such knowledge:
    - Communal ownership and attribution;
    - Ongoing positive obligations and rights to use and deal with cultural knowledge; and
    - The sharing of Indigenous cultural knowledge through specific consent and decision-making procedures of the relevant group.
- Features of ‘traditional knowledge’
  - Using the term ‘Indigenous knowledge’, Michael Davis in ‘Biological Diversity and Indigenous Knowledge’ (Research Paper No 17, Parliamentary Library, Parliament of Australia, 1997-98) proposes 4 characteristic features of traditional knowledge:
    - collective rights and interests held by Indigenous peoples in their knowledge;
    - close interdependence between knowledge, land, and other aspects of culture;
    - oral transmission of knowledge under well understood cultural principles, and
    - rules regarding secrecy and sacredness.
- Traditional medicinal knowledge
  - Traditional medicinal knowledge involves knowledge of the healing properties of different plants. Such knowledge is often restricted to particular members of an Indigenous or local community and ‘up to 80% of the world’s population’ rely on traditional medicines and remedies for primary health care needs (Katrina Brown, ‘Medicinal Plants, indigenous medicine and conservation of biodiversity in Ghana’ in Timothy M Swanson (ed) Intellectual Property Rights and Biodiversity Conservation: an interdisciplinary analysis of the values of medicinal plants (Cambridge University Press, 1995) 201).
  - While such traditional knowledge may be considered by the Indigenous community as common heritage of humankind, conflict arises when such information is commodified through patents by scientists, researchers, pharmaceutical companies etc without prior informed consent or sharing of benefits with the traditional knowledge holders (Janke 1999).
WIPO and traditional knowledge
- WIPO Developments
  - As discussed in the video on page 5.11, the World Intellectual Property Organisation has been involved in coordinating and drafting legal agreements for the protection of traditional knowledge (TK), traditional cultural expressions (TCEs) and intellectual property and genetic resources (IP and GR).
  - WIPO first became involved in working on the protection of traditional knowledge as the result of a collaboration with UNEP to chart existing systems of protecting traditional cultural expressions and traditional knowledge (1999).
  - Subsequent to this, an Intergovernmental Committee (IGC) on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore was established by the World Intellectual Property Organisation in 2000. The IGC was established for the purpose of:
    - First, it was established to address three new themes that shared certain distinct features: GRs, TK and TCEs were regarded as the “common heritage of humanity” and as intellectual valuables requiring appropriate forms of IP protection. Second, GRs, TK and TCEs were seen as the intellectual assets of new key players in IP policy-making, namely developing countries and indigenous and local communities. Third, and more broadly, the IGC was conceived as part of a larger and structured endeavor by WIPO to move towards a modern, responsive IP system that could embrace non-Western forms of creativity and innovation, be comprehensive in terms of beneficiaries, and be fully consistent with developmental and environmental goals. (See WIPO, The WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore: Background Brief No. 2 (2023) 3).
  - It is through this forum that progress has been made in developing draft articles for the protection of traditional knowledge and traditional cultural expressions.
- Draft articles for the protection of TK, TCEs, and IP and GR
  - The draft articles for the protection of traditional cultural expressions have gone through several iterations with the latest version being released in June 2023.
  - Draft articles for the protection of traditional knowledge have undergone similar iterations with the latest being released in June 2023.
  - The latest version of the consolidated document relating to intellectual property and genetic resources was released in September 2023.
  - While progress has been slow in resolving open issues in each of the draft documents, the IGC Mandate for 2018-2019 states that the IGC will ‘continue to expedite its work, with the objective of reaching an agreement on an international legal instrument(s), without prejudging the nature of outcome(s), relating to intellectual property which will ensure the balanced and effective protection of genetic resources (GRs), traditional knowledge (TK) and traditional cultural expressions (TCEs)’.
  - Further, the IGC ‘will build on the existing work carried out by the Committee, including text-based negotiations, with a primary focus on narrowing existing gaps and reaching a common understanding on core issues, including definitions, beneficiaries, subject matter, objectives, scope of protection, and what TK/TCEs subject matter is entitled to protection at an international level, including consideration of exceptions and limitations and the relationship with the public domain’. (See WIPO IGC, Mandate 2024-25)
  - More information on the WIPO IGC can be found on the IGC WIPO website including the latest Mandate: http://www.wipo.int/tk/en/igc/.
So how is traditional cultural expression different to TK?
- Although TK and traditional cultural express (TCE) may seem similar the western world has separated them into two categories. Stoianoff and Wright 2018 explain the difference
  - Traditional knowledge involves knowledge, skills, know-how and innovations of Indigenous or local communities, and this category of knowledge typically aligns with western patent law systems.
  - By contrast, traditional cultural expressions include Indigenous or traditional artworks, music and songs, stories and performances that are typically generated collectively and cumulatively and passed on from generation to generation. The works that fall within the category of traditional cultural expressions align with the works that may be protected under western copyright law, design law and even trade marks law.
What is the difference between TK and Indigenous Knowledge?
- What is Indigenous knowledge (IK)?
  - If Indigenous knowledge (IK) is described as knowledge held and used by communities, peoples and nations that are “Indigenous” how are TK and IK different?
  - Although there are different perspectives one of the simplest explanations is that IK is used to refer to knowledge that is held and used by the Indigenous people who are still living on their ancestral land. In this context the terms IK and TK could be interchangable.
  - The difference is that TK can also refer to knowledge that is held by people who are now living away from their place of origin, e.g. moved to another country, but have carried their culture with them. This is still traditional knowledge but is no-longer Indigenous as they are not from the Indigenous community of the land they are inhabiting. This is why the WIPO sometimes refers to IK as a sub-set of TK.
Indigenous knowledge in Australia
- The Importance of TK to Indigenous Culture
  - TK is a significant issue when considering the culture of Australia’s First Nations peoples. While to some people their culture’s history and practices have little impact on the person’s current life, the history and connection to country of Australia’s First Nations peoples is often an important part of their identity.
    - “Aboriginal people have lived in Australia for over 40,000 years, or since the beginning of the Dreamtime or Creation Era. In fact, Aboriginal culture is the oldest living culture in the world today. Over these many years, Aboriginal people lived with the land, taking everything they needed for their survival (medicine, food, shelter, clothing, spirituality) from the earth and the elements. Plants and animals were carefully harvested to ensure there was enough food left for the next generation. Totems and kinship rules meant that Aboriginal people lived sustainably, not taking more than they needed from the earth. Aboriginal people had a responsibility to look after their totem (usually an animal) and the habitat in which it lived (plant, water and so on).”
    - McKemey and White 2011
  - Aboriginal culture and history is passed down orally through the generations. This knowledge, gained through centuries of learning, and their cultural practices are often considered sacred. The following is an example of TK, and the importance it has, in an Aboriginal setting:
    - “Aboriginal use of plants over thousands of years has led to an incredibly detailed and intimate knowledge base which is held within Aboriginal culture. In order to survive, Aboriginal people needed to know which plants could be eaten throughout the seasons of the year, which plants could heal diseases and help fix broken bones, which plants could provide habitat for animals and a reliable place to hunt for meat and eggs, which plants could be used to make tools or shelter and which plants could be used to help people to carry out their spiritual obligations, such as ceremonies or funerals”
Major global concerns: TCE
- WIPO Gap Analysis 2008
  - In order to identify the shortcomings in IP protection of TK and TCEs, the WIPO conducted a gap analysis in 2008 (this has been updated from time-to-time since then). This analysis recognised that there is no internationally accepted definition of TCE.
- 5 categories of TCE
  - Literary and Artistic Productions
    - Requirement of originality in order to attract copyright protection
    - Imitation or misappropriation of the style of an indigenous production
    - Communal ownership and lack of identifiable author
    - Term of protection is definite in IP because the work must ultimately become part of the public domain – on the other hand protection of TCE would be expected to continue
    - Exceptions and limitations to copyright protection in favour of the public domain are not considered appropriate for TCEs.
    - Defensive protection – denying copyright protection to authors outside the community who have developed derivative works based on the TCE of the community.
    - Ownership in documentation and recordings of TCEs vest in the author not the community whose TCE is being recorded, hence lack of control.
  - Performances of traditional cultural expressions
    - Performers’ rights are aimed at the individual performer who may or may not be indigenous. If the troupe is comprised of members of the indigenous community then there is a benefit back to the community
    - Only aural performances are protected under the WIPO Performances and Phonograms Treaty 1996
    - Performers’ rights are a limited in the audiovisual genre in that if consent is given to be photographed or filmed that is the end of the rights
    - Performers’ rights in relation to an unfixed performance are not time limited but those that are fixed in say a sound recording are time limited.
  - Designs
    - Unless registered, not protected.
    - Period of protection is short in any event and unsuitable for old designs or even newly evolving ones.
  - Secret traditional cultural expressions
    - Maintaining or determining the elements of confidentiality may be difficult – particularly where there is no uniformity between jurisdictions: eg statutory unfair competition rules compared to common law breach of confidence elements.
    - Art 39 of TRIPS requires that the undisclosed information be commercially valuable.
  - Indigenous and traditional names, words and symbols
    - The need for special measures to prevent the use or registration of indigenous and traditional names, words and symbols as trade marks by non-indigenous entities.
  - Desired protections
    - The Gap Analysis outlined a number of desired protections for TCEs. These are:
      - (a) protection of TCEs against unauthorized use, such as reproduction, adaptation, distribution, performance and other such acts, especially commercial use;
      - (b) prevention of insulting, derogatory and/or culturally and spiritually offensive uses of TCEs;
      - (c) prevention of the appropriation of the reputation or distinctive character of TCEs in ways that evoke an authentic traditional product, by use of misleading or false indications as to authenticity or origin, or adoption of their “style;” (d) prevention of the failure to acknowledge source when TCEs are used;
      - (e) defensive protection of TCEs (meaning, the protection of TCEs against the obtaining of IP rights over the TCEs or adaptations thereof); and (f) unauthorized disclosure of confidential or secret TCEs.
Major global concerns: TK
- The WIPO also identified gaps in the definition or identification of TK to be protected and in the objectives or policy rationales of protection, including failure to:
  - Recognise the intrinsic value of TK systems.
  - Recognise that TK systems are valuable forms of innovation.
  - Promote respect for TK systems and the cultural and spiritual values of the holders of TK.
  - Respect the rights of holders and custodians of traditional knowledge.
  - Promote conservation and preservation of traditional knowledge.
  - Strengthen traditional knowledge systems, including supporting continuing the customary use, development, exchange and transmission of traditional knowledge.
  - Support continuing innovation within traditional knowledge systems and encouraging innovation derived from the traditional knowledge base.
  - Support the safeguarding and preservation of traditional knowledge.
  - Repress misappropriation and unfair and inequitable uses of traditional knowledge, and promote equitable benefit-sharing from traditional knowledge.
  - Ensure that access and use of traditional knowledge is subject to prior informed consent.
  - Promote sustainable community development and legitimate trading activities based on traditional knowledge systems.
  - Curtail the grant or exercise of improper intellectual property rights over traditional knowledge.
- Gaps in the existing legal mechanisms
  - (i) Subject matter not covered under existing IP law.
    - TK that is not covered by existing forms of IP protection
    - Innovation that is cumulative and collective over generations within the one community
  - (ii) Beneficiaries or right holders not recognised.
    - Recognition of collective rights, interests and entitlements within a TK system
  - (iii) Clarifying or confirming the application to TK of existing principles
    - A norm expressly applying patent principles in traditional knowledge contexts.
  - (iv) Forms of protection not provided under existing international standards.
    - A specific disclosure requirement relating to traditional knowledge.
    - Protection against unjust enrichment, misappropriation or misuse of traditional knowledge.
    - Prior informed consent.
    - A right of acknowledgement and integrity.
  - (v) absence of entitlement to obtain remuneration or other benefits.
- Options to address Gaps
  - (i) a binding international instrument or instruments;
  - (ii) authoritative or persuasive interpretations or elaborations of existing legal instruments;
  - (iii) a non-binding normative international instrument or instruments;
  - (iv) a high level political resolution, declaration or decision, such as an international political declaration espousing core principles, stating a norm against misappropriation and misuse, and establishing the needs and expectations of traditional cultural expression / traditional knowledge holders as a political priority.
  - (v) strengthened international coordination through guidelines or model laws.
  - (vi) coordination of national legislative developments.
  - (vii) coordination and cooperation on capacity building and practical initiatives.
WIPO and Draft Articles for Protection of Traditional Cultural Expressions
- The Protection of Traditional Cultural Expressions:
  - Compare the following Draft Articles (19 June 2019) with the latest referred to on page 5.12
  - The Draft Articles for the Protection of TCEs cover the following topics:
    - Policy objectives
    - Definitions (e.g. Traditional cultural expressions, public domain, use/utilisation)
    - Subject matter of protection
    - Beneficiaries of protection
    - Scope of protection
    - Administration of rights/interests
    - Exceptions and limitations
    - Term of protection
    - Formalities
    - Sanctions, remedies and exercise of rights/interests
    - Transitional measures
    - Relationship with international agreements
    - National treatment
    - Transboundary cooperation
    - Capacity building and awareness raising
- Negotiations are continuing with a number of provisions in the draft articles containing bracketed terms or alternative provisions.
  - For example, Traditional Cultural Expressions (see Article 1) are defined as follows:
    - Traditional Cultural Expressions are any forms in which traditional culture practices and knowledge are expressed, [appear or are manifested] [the result of intellectual activity, experiences, or insights] by indigenous [peoples], local communities and/or [other beneficiaries] in or from a traditional context, and may be dynamic and evolving and comprise verbal forms1, musical forms2, expressions by movement3, tangible4 or intangible forms of expression, or combinations thereof.
      - 1 [Such as stories, epics, legends, popular stories, poetry, riddles and other narratives; words, signs, names and symbols.]
      - 2 [Such as songs, rhythms, and instrumental music, the songs which are the expression of rituals.]
      - 3 [Such as dance, works of mas, plays, ceremonies, rituals, rituals in sacred places and peregrinations, games and traditional sports/sports and traditional games, puppet performances, and other performances, whether fixed or unfixed.]
      - 4 [Such as material expressions of art, handicrafts, ceremonial masks or dress, handmade carpets, architecture, and tangible spiritual forms, and sacred places.]
  - Article 3, setting out the protection riteria/eligibility criteria, contains 2 alternative provisions each with a number of bracketed terms.
  - [Alt 1
  - 3.1 Subject to Article 3.2, protection shall be extended under this instrument to traditional cultural expressions which are:
    - (a) created, generated, received, or revealed, by indigenous [peoples], local communities and/or [other beneficiaries] and developed, held, used, and maintained collectively by them [in accordance with their customary laws and protocols];
    - (b) linked with, and are an integral part of, the cultural and social identity and traditional heritage of indigenous [peoples], local communities and/or [other beneficiaries]; and
    - (c) transmitted between or from generation to generation, whether consecutively or
  - 3.2. A Member State/Contracting Party may under its national law, condition protection on the prior existence of the traditional cultural expressions for a reasonable term as determined by the Member State/Contracting Party.]
  - [Alt 2
  - 3.1 Protection should be extended under this instrument to traditional cultural expressions which are:
    - (a) created, generated, received, or revealed, by indigenous [peoples], local communities and/or [other beneficiaries] and developed, held, used, and maintained collectively by them [in accordance with their customary laws and protocols];
    - (b) linked with, are an integral part of, and are distinctively associated with the cultural and social identity and traditional heritage of indigenous [peoples], local communities and/or [other beneficiaries]; and
    - (c) transmitted between or from generation to generation, whether consecutively or not for a term not less than fifty years or five generations.]]
WIPO and Draft Articles for Protection of Traditional Knowledge
- The Protection of Traditional Knowledge:
  - Compare the following Draft Articles (19 June 2019) with those of the latest draft provided on page 5.12
  - The Draft Articles for the Protection of Traditional Knowledge cover the following topics:
    - Policy objectives
    - Definitions (e.g. misappropriation, misuse, public domain, traditional knowledge, use/utilisation)
    - Subject matter of protection
    - Beneficiaries of protection
    - Scope of protection
    - Database protection, complementary/defensive protection
    - Sanctions, remedies and exercise of rights
    - Disclosure requirement
    - Administration of rights/interests
    - Exceptions and limitations
    - Term of protection/rights
    - Formalities
    - Transitional measures
    - Relationship with other international agreements
    - Non-derogation
    - National treatment
    - Transboundary cooperation
  - Similar to the Draft Articles for the Protection of TCEs, negotiations are continuing with a number of provisions in the draft articles containing bracketed terms or alternative provisions or both.
  - While the definition of ‘traditional knowledge’ set out in Article 1 is almost agreed, there are 2 alternative definitions for ‘secret traditional knowledge’:
    - Traditional Knowledge refers to knowledge originating from indigenous [peoples], local communities and/or [other beneficiaries] that may be dynamic and evolving and is the result of intellectual activity, experiences, spiritual means, or insights in or from a traditional context, which may be connected to land and environment, including know-how, skills, innovations, practices, teaching, or learning.
    - [Alt 1
    - Secret traditional knowledge is traditional knowledge that is held and regarded as secret by applicable indigenous [peoples] and local communities [beneficiaries] in accordance with their customary laws, protocols, practices under the understanding that the use or application of the traditional knowledge is constrained within a framework of secrecy.]
    - [Alt 2
    - Secret traditional knowledge is traditional knowledge that is not generally known or readily accessible to the public; has commercial value because it is secret; and has been subject to measures to maintain secrecy of the knowledge.]
  - The Draft Articles also provide two alternative definitions for ‘protected traditional knowledge’ and separate definitions for ‘sacred traditional knowledge’, ‘narrowly diffused traditional knowledge’, and ‘widely diffused traditional knowledge.’
  - Article 3 sets out 3 alternative provisions and 2 alternative headings relating to the subject matter of protection under the Draft Articles.
- [ARTICLE 3
  - [PROTECTION CRITERIA/ELIGIBILITY CRITERIA]
    - [Alt 1
      - 3.1 Subject to Article 3.2, protection shall be extended under this instrument to traditional knowledge, which is:
        
        (a) created, generated, received, or revealed, by indigenous [peoples], local communities and/or [other beneficiaries] and developed, held, used, and maintained collectively by them [in accordance with their customary laws and protocols];
        
        (b) linked with, and is an integral part of, the cultural and social identity and traditional heritage of indigenous peoples, local communities and/or [other beneficiaries]; and
        
        (c) transmitted between or from generation to generation, whether consecutively or
      - 3.2 A Member State/Contracting Party may under its national law, condition protection on the prior existence of the traditional knowledge for a reasonable term as determined by the Member State/Contracting Party.]
    - [Alt 2
      - Protection should be extended under this instrument to traditional knowledge which is:
        
        (a) created, generated, received, or revealed, by indigenous [peoples], local communities and/or [other beneficiaries] and developed, held, used, and maintained collectively by them [in accordance with their customary laws and protocols];
        
        (b) linked with, is an integral part of, and is distinctively associated with, the cultural identity and traditional heritage of indigenous peoples, local communities and/or [other beneficiaries]; and
        
        (c) transmitted between or from generation to generation, whether consecutively or not for a term not less than fifty years or five ]]
    - [Alternative ARTICLE 3
      - [SUBJECT MATTER OF THE INSTRUMENT]
        
        This instrument applies to patents and traditional knowledge, that is:
        
        (a) distinctively associated with the cultural heritage of beneficiaries as defined in Article 4; and
        
        (b) created/generated, developed, maintained and shared collectively, as well as transmitted from generation to generation for a term as has been determined by each Member State, but not less than 50 years or a period of five generations.]
Other international solutions
- We have seen the potential for WIPO Draft provisions for (i) the protection of traditional cultural expressions/ expressions of folklore and (ii) for protection of traditional knowledge to provide a mechanism to deal with the difficulty of fitting into conventional intellectual property rights.
- In addition to the attempts to negotiate legal agreements at the World Intellectual Property Organisation, a number of regional bodies and individual countries have implemented their own measures for the protection of traditional knowledge. These include:
  - African Model Legislation for the Protection of the Rights of Local Communities, Farmers and Breeders, and for the Regulation of Access to Biological Resources
  - Pacific Community Regional Framework for the protection of Traditional Knowledge and Expressions of Culture 2002
  - Andean Community Decision 391: Common System on Access to Genetic Resources
  - National sui generis legislation recognising and protecting traditional knowledge in Brazil, India, Peru, Panama, Philippines.
- These agreements tend to include provisions regulating access and benefit sharing; require the establishment of registers or databases of traditional knowledge/traditional cultural expressions; and the establishment of an administrative or competent authority of some kind.
  - From an Australian perspective, the example of India provides an interesting case study. India has similar intellectual property laws to Australia and has developed legislation that provide some measure of protection of traditional knowledge associated with biological resources. The Indian Biological Diversity Act 2002 includes provisions regulating access and benefit sharing; establishes three tiers of competent authority (the National Biodiversity Authority, State Biodiversity Boards and Local Biodiversity Management Committees); and requires the establishment of local level People’s Biodiversity Registers. In addition to the measures set out in the Biological Diversity Act, the Indian government has established a Traditional Knowledge Digital Library (TKDL) containing information on Indian traditional medicinal knowledge that is utilised by patent offices around the world as a source of potentially invalidating prior art. This resource has successfully led to the rejection, invalidation, or withdrawal of patent applications based on Indian traditional medicinal knowledge. For more information visit, the National Biodiversity Authority websiteLinks to an external site. and the TKDL websiteLinks to an external site.
Traditional Knowledge: patents, confidential information and CBD
- Traditional knowledge and patents
  - Discoveries and naturally occurring genetic material are not patentable per se as they are not inventions.
    - Art 27 of TRIPS acknowledges the patentability of:
      - Any inventions, whether products or processes, in all fields of technology, provided they are new, involve an inventive step and are capable of industrial application.
    - There are 2 perspectives here:
      - Can traditional knowledge about biological resources be protected under patent law?
      - Or does traditional knowledge prevent patentability on the basis that the information forms part of the prior art base from which the criteria of novelty is judged?
- Traditional knowledge and confidential information
  - If the traditional knowledge is secret and complies with the rules of confidentiality then it may not form part of the prior art base.
  - If the knowledge also forms a significant component(s) of the invention developed from the biological resource then the providers of that knowledge may have a claim as joint owners of the ensuing patent.
- Traditional knowledge and the CBD: access and benefit sharing
  - Recognition of TK in CBD
    - Article 8(j) of the CBD encourages Contracting parties, nations, to:
    - ‘…respect, preserve and maintain knowledge, innovations and practices of indigenous and local communities embodying traditional lifestyles relevant for the conservation and sustainable use of biological diversity and promote their wider application with the approval and involvement of the holders of such knowledge, innovations and practices and encourage the equitable sharing of the benefits arising from the utilisation of such knowledge, innovations and practices.’
    - See also Art. 10(c), 17.2 & 18.4
  - Art. 18 Technical and Scientific Cooperation
    - 4. The Contracting Parties shall, in accordance with national legislation and policies, encourage and develop methods of cooperation for the development and use of technologies, including indigenous and traditional technologies, in pursuance of the objectives of this Convention. For this purpose, the Contracting Parties shall also promote cooperation in the training of personnel and exchange of experts.
  - Traditional Knowledge and Benefit Sharing
    - Joint ownership of the patents developed from the biological resources with the holders of the traditional knowledge.
    - If there is no joint ownership what are the possibilities?
      - sui generis legislation
      - informed consent and benefit-sharing contracts
      - Disclosure of origin in the Patent regime
  - Benefit Sharing Solutions
    - Straus points out the necessity for
      - ‘a complex network of contractual arrangements between a variety of institutions from provider and the use countries’ (1998).
    - Access agreements and Benefit sharing agreements can go hand in hand: eg Bonn Guidelines, the Environmental Protection and Biodiversity Conservation Act 1999 (Cth), now Nagoya Protocol.
    - Requiring disclosure of origin for patent registration as a means of ensuring benefits
Convention for the Safeguarding Intangible Cultural Heritage
- The Convention for the Safeguarding of Intangible Cultural Heritage 2003 entered into force on 20 April 2006. The Convention has 180 member states however some key countries are not members such as Australia, USA, New Zealand and Canada.
  - The purposes of the Convention are set out in Article 1 as:
    - (a) to safeguard the intangible cultural heritage;
    - (b) to ensure respect for the intangible cultural heritage of the communities, groups and individuals concerned;
    - (c) to raise awareness at the local, national and international levels of the importance of the intangible cultural heritage, and of ensuring mutual appreciation thereof;
    - (d) to provide for international cooperation and assistance.
  - The term ‘intangible cultural heritage’ is defined in Article 2 as
    - the practices, representations, expressions, knowledge, skills – as well as the instruments, objects, artefacts and cultural spaces associated therewith – that communities, groups and, in some cases, individuals recognize as part of their cultural heritage. This intangible cultural heritage, transmitted from generation to generation, is constantly recreated by communities and groups in response to their environment, their interaction with nature and their history, and provides them with a sense of identity and continuity, thus promoting respect for cultural diversity and human creativity. For the purposes of this Convention, consideration will be given solely to such intangible cultural heritage as is compatible with existing international human rights instruments, as well as with the requirements of mutual respect among communities, groups and individuals, and of sustainable development.
  - The Convention provides for the establishment of an Intergovernmental Committee for the Safeguarding of Intangible Cultural Heritage (IGC) (as set out in Article 5). The role of the IGC is to monitor implementation; provide guidance on best practices in safeguarding intangible cultural heritage; prepare a plan for the use of the Intangible Cultural Heritage Fund (to be established under the Convention); examine reports submitted by State parties; and examine and make decisions on requests submitted by State parties (see article 7).
United Nations Declaration on the Rights of Indigenous Peoples (UNDRIP)
- The United Nations Declaration on the Rights of Indigenous Peoples 2007 is a non-binding declaration that was adopted by the General Assembly on 13 September 2007 by a vote of 144 in favour, 4 against and 11 abstaining. The parties that originally voted against the Declaration were Australia, Canada, New Zealand and the USA. These four countries have since endorsed the Declaration: Australia (April 2009), New Zealand (April 2010), Canada (November 2010), USA (December 2010).
  - UNDRIP includes specific provisions relating to the protection of traditional knowledge. The Preamble makes reference to ‘recognising that respect for indigenous knowledge, cultures and traditional practices contributes to sustainable and equitable development and proper management of the environment.’
- UNDRIP: Article 11
  - Indigenous peoples have the right to practise and revitalize their cultural traditions and customs. This includes the right to maintain, protect and develop the past, present and future manifestations of their cultures, such as archaeological and historical sites, artefacts, designs, ceremonies, technologies and visual and performing arts and literature.
  - States shall provide redress through effective mechanisms, which may include restitution, developed in conjunction with indigenous peoples, with respect to their cultural, intellectual, religious and spiritual property taken without their free, prior and informed consent or in violation of their laws, traditions and customs.
- UNDRIP: Article 24
  - 1. Indigenous peoples have the right to their traditional medicines and to maintain their health practices, including the conservation of their vital medicinal plants, animals and minerals…
- UNDRIP Article 25
  - Indigenous peoples have the right to maintain and strengthen their distinctive spiritual relationship with their traditionally owned or otherwise occupied and used lands, territories, waters and coastal seas and other resources and to uphold their responsibilities to future generations in this regard.
- UNDRIP Article 31
  - Indigenous peoples have the right to maintain, control, protect and develop their cultural heritage, traditional knowledge and traditional cultural expressions, as well as the manifestations of their sciences, technologies and cultures, including human and genetic resources, seeds, medicines, knowledge of the properties of fauna and flora, oral traditions, literatures, designs, sports and traditional games and visual and performing arts. They also have the right to maintain, control, protect and develop their intellectual property over such cultural heritage, traditional knowledge, and traditional cultural expressions.
  - In conjunction with indigenous peoples, States shall take effective measures to recognize and protect the exercise of these rights.

Week 6: IP and Health

A right to health?
- A right to human health?
  - There are a number of international instruments that provide for a human right to health.
  - Universal Declaration of Human Rights (1948)
    - Art. 1: All human beings are born free and equal in dignity and rights. They are endowed with reason and conscience and should act towards one another in a spirit of brotherhood.
    - Art. 25:
      - (1) Everyone has the right to a standard of living adequate for the health and well-being of himself and of his family, inclulding food, clothing, housing and medical care and necessary social services…
      - (2) Motherhood and childhood are entitled to special care and assistance. All children, whether born in or out of wedlock, shall enjoy the same social protection.
  - International Covenant on Economic, Social and Cultural Rights (ICESCR) (entry into force 1976)
    - Art. 12.1: The States Parties to the present Covenant recognize the right of everyone to the enjoyment of the highest attainable standard of physical and mental health
  - Substantive Issues Arising in the Implementation of ICESCR (2000)
    - Paragraph 1: Every human being is entitled to the enjoyment of the highest attainable standard of health conducive to living a life in dignity
  - UN Commission on Human Rights Resolution 2001/33: Access to medication in the context of pandemics such as HIV/AIDS
    - This resolution reaffirmed the ‘right of everyone to the enjoyment of the highest attainable standard of physical and mental health is a human right’. Accordingly nations are required to pursue policies that will promote the availability and affordability of pharmaceuticals and will refrain from taking measures that would deny or limit access.
HIV/AIDS epidemic
- HIV/AIDS epidemic
  - According to the Joint United Nations Programme on HIV/AIDS (UNAIDS), in 2016, approximately 36.7 million people are living with HIV and 1.8 million people were newly infected with HIV. Of these new infections, approximately 64% are in sub-Saharan Africa.
  - It is estimated that 1 million people died from AIDS-related illnesses in 2016. Of these, 120,000 deaths were of children aged under 15 years. Since the start of the HIV/AIDS epidemic, approximately 35 million people have died from AIDS-related illness.
  - Despite the large number of people living with HIV, only 53% are on life-saving antiretroviral treatments globally. These figures are even lower in Western and Central Africa, where only 35% of all people living with HIV are on treatment. In some countries, such as Sudan, South Sudan and Somalia the estimated percentage of the population on antiretroviral treatment is between 5-16%. (For more statistics, see UNAIDS website and specifically the 2021 UNAIDS Global AIDS Update).
  - Poverty is not the only reason for the spread of HIV, as human rights abuse against women is a significant contributing factor. Even with access to the drugs, poor countries lack both the financial resources and the medical and physical infrastructures necessary to carry out distribution of medicines and monitoring of infections.
- UN Special Session on HIV/AIDS
  - In 2001, the UN held a special session to address this global crisis. The result of this meeting was the Declaration of Commitment on HIV/AIDS ‘Global Crisis - Global Action’. Among other principles, this Declaration addressed the issue of access to pharmaceuticals in the context of pandemics as being a fundamental element in progressively achieving the “right of everyone” to the highest attainable standard of health.
    - 15. Recognizing that access to medication in the context of pandemics such as HIV/AIDS is one of the fundamental elements to achieve progressively the full realization of the right of everyone to the enjoyment of the highest attainable standard of physical and mental health;
  - However, the lack of affordable drugs and health infrastructure continued to hinder effective responses to the epidemic, particularly in Africa. This could be attributed, in part, to the impact of intellectual property rights over antiretroviral medicines.
Pharmaceuticals and Intellectual Property
- Pharmaceuticals and Intellectual Property
  - The HIV/AIDS epidemic and the lack of access to life-saving treatment contributed to increasing international attention on the role of intellectual property rights in healthcare and pharmaceuticals in particular.
- The pharmaceutical industry
  - The research and development process involved in creating new pharmaceutical products is a long and expensive process with recent figures from the United States of America Department of State showing costs of between 2bn to develop one drug. It is argued that the grant of patent rights over pharmaceutical products is necessary to recoup some of this investment and to encourage further investment and innovation in product development.
  - Furthermore, the lead time for entering the market with a new pharmaceutical product is lengthy due to requirements for clinical trials and regulatory approvals. This cuts into the period of protection offered by a patent. As a result, the effective patent life for a pharmaceutical product is between 11-12 years compared with an effective patent life of 18.5 years for other industries (although the turnaround in the development of COVID-19 vaccines defies all the data - will this revolutionise the industry?).
  - Meanwhile, the returns associated with patented pharmaceuticals are high with economic gains to the United States of America greater than $500bn per year.
- What impact has IPR had on access to medicines?
  - In the context of the HIV/AIDS epidemic, some studies have shown that geographic patent coverage does not appear to correlate with access to antiretroviral treatment and that there is no evidence that treatment is more accessible in countries with few or no antiretroviral patents. Both brand name and generic sources of drugs are available at around 90% less than the cost of those sold in the United States of America (following a three year battle over costs).
  - This would suggest that there are additional factors at play in access to medicines in addition to intellectual property rights. These may include the physical and medical infrastructure required to diagnose diseases, treat patients and distribute medication.
WTO and the Doha Declaration
- WTO and the Doha Declaration
  - In response to concerns over the impact of intellectual property rights and the TRIPS Agreement on access to medicines, the member countries of the WTO adopted the Doha Declaration on the TRIPS Agreement and public health in 2001.
  - The Doha Declaration was intended to clarify the interpretation of the existing flexibilities under the TRIPS Agreement in relation to public health and to address the ability of member countries to exercise these flexibilities.
  - The Doha Declaration provides that the TRIPS Agreement is to be interpreted in a ‘manner supportive of public health’ and recognises that ‘special and differential treatment’ for developing and least-developed countries is an ‘integral part of the WTO Agreements’.
- The key elements of the Doha Declaration are:
  - The TRIPS Agreement does not and should not prevent Members from taking measures to protect public health;
  - The TRIPS Agreement should be interpreted and implemented in a manner supportive to promoting access to medicines for all;
  - Each Member has the right ‘to use, to the full, the provisions in the TRIPs Agreement, which provide flexibility for this purpose’ for example, granting compulsory licences; and
  - In accordance with article 31 of the Vienna Convention on the Law of Treaties, the TRIPS agreement must be interpreted in light of the Agreement’s objectives and principles (as set out in Articles 7 and 8).
- As a reminder:
- TRIPs Objectives: Article 7
  - The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.
- TRIPs Principles: Article 8
  - 1. Members may, in formulating or amending their laws and regulations, adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development, provided that such measures are consistent with the provisions of this Agreement.
  - 1. Appropriate measures, provided that they are consistent with the provisions of this Agreement, may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology.
TRIPS and Access to Medicine
- TRIPS and Limitations on Patents
  - TRIPs Article 27.2 – limits on patentability
    - Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law.
  - TRIPs Article 30 - exceptions to exclusive rights
    - Members may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.
    - Note the exceptions set out in article 30 are separate to the compulsory licensing provisions found in Article 31.
  - TRIPs Article 31 - compulsory licensing
    - The TRIPS Agreement provides for compulsory licensing under Article 31. Where compulsory licences are granted by a member country, such licences are subject to the following principles (as set out in article 31(a)-(l):
      - (a) compulsory licences shall be considered on their individual merits;
      - (b) such licences shall only be approved where the proposed user has made efforts to obtain authorisation from the rights holder on reasonable commercial terms and where those efforts have been unsuccessful within a reasonable period of time;
      - (c) the scope and duration of use under a compulsory licence must be limited to the purpose for which it is authorised;
      - (d) use under a compulsory licence shall be non-exclusive;
      - (e) use under a compulsory licence shall be non-assignable;
      - (f) use under a compulsory licence shall be authorised predominantly for the supply of the domestic market of a member country authorising the compulsory licence;
      - (g) compulsory licences may be terminated if and when the circumstances which justified the grant of the compulsory licence cease to exist and are unlikely to recur;
      - (h) the rights holder must be paid adequate remuneration in the circumstances;
      - (i) the legal validity of decisions relating to compulsory licences must be subject to judicial review or other review by a higher authority;
      - (j) decisions relating to remuneration provided in respect of a compulsory licence must be subject to judicial review or other review by a higher authority;
      - (k) members do not need to comply with the requirements in paragraphs (b) and (f) where a compulsory licence is permitted to remedy a practice that has been determined after judicial or administrative process to be anti-competitive;
      - (l) additional conditions shall apply where a compulsory licence is granted in respect of a patent that cannot be exploited without infringing another patent.
    - Limitations on Compulsory Licensing
      - Initially the TRIPS Agreement (in article 31(f)) limited the utility of compulsory licences to ‘predominately for the supply of the domestic market authorising such use’ thereby limiting export under licence by drug-producing nations to non-manufacturing less-developed countries.
      - In recognition of this limitation, the Cancún Ministerial decision provided an interim waiver of article 31(f) until the TRIPS Agreement could be formally amended to allow a member country that produced generics to export to eligible importing countries.
Amendment to TRIPS
- Read the General Council decision of 6 December 2005 for the Amendment of the TRIPS Agreement.
  - The amendment introduced Article 31bis after Article 31 of TRIPS Agreement together with the Annex to the TRIPS Agreement after Article 73 of the TRIPS Agreement (the TRIPS Protocol).
  - The effect of the amendment is to enable those countries capable of manufacturing generics (for example, India and Brazil) to do so under compulsory licence and export to a least-developed nation or other eligible importing Member.
  - The amendment came into effect on 23 January 2017.
- Article 31bis
  - 1. The obligations of an exporting Member under Article 31(f) shall not apply with respect to the grant by it of a compulsory licence to the extent necessary for the purposes of production of a pharmaceutical product(s) and its export to an eligible importing Member(s) in accordance with the terms set out in paragraph 2 of the Annex to this Agreement.
  - 1. Where a compulsory licence is granted by an exporting Member under the system set out in this Article and the Annex to this Agreement, adequate remuneration pursuant to Article 31(h) shall be paid in that Member taking into account the economic value to the importing Member of the use that has been authorized in the exporting Member. Where a compulsory licence is granted for the same products in the eligible importing Member, the obligation of that Member under Article 31(h) shall not apply in respect of those products for which remuneration in accordance with the first sentence of this paragraph is paid in the exporting Member.
  - 1. With a view to harnessing economies of scale for the purposes of enhancing purchasing power for, and facilitating the local production of, pharmaceutical products: where a developing or least developed country WTO Member is a party to a regional trade agreement within the meaning of Article XXIV of the GATT 1994 and the Decision of 28 November 1979 on Differential and More Favourable Treatment Reciprocity and Fuller Participation of Developing Countries (L/4903), at least half of the current membership of which is made up of countries presently on the United Nations list of least developed countries, the obligation of that Member under Article 31(f) shall not apply to the extent necessary to enable a pharmaceutical product produced or imported under a compulsory licence in that Member to be exported to the markets of those other developing or least developed country parties to the regional trade agreement that share the health problem in question. It is understood that this will not prejudice the territorial nature of the patent rights in question.
  - 1. Members shall not challenge any measures taken in conformity with the provisions of this Article and the Annex to this Agreement under subparagraphs 1(b) and 1(c) of Article XXIII of GATT 1994.
  - 1. This Article and the Annex to this Agreement are without prejudice to the rights, obligations and flexibilities that Members have under the provisions of this Agreement other than paragraphs (f) and (h) of Article 31, including those reaffirmed by the Declaration on the TRIPS Agreement and Public Health (WT/MIN(01)/DEC/2), and to their interpretation. They are also without prejudice to the extent to which pharmaceutical products produced under a compulsory licence can be exported under the provisions of Article 31(f).
- Conditions applicable to compulsory licences granted under Article 31bis are set out in the Annex and Appendix to the TRIPS Agreement
Implementing the TRIPS Protocol
- Implementing the TRIPS Protocol
  - Complete details of the countries that have implemented the TRIPS Protocol are set out on the WTO website, Amendment of the TRIPS Agreement
  - Early adopters of the TRIPS Protocol include Canada who implemented ‘Canada’s Access to Medicines Regime’ (CAMR) in May 2005 and the European Union who adopted the Protocol in May 2006 under ‘Regulation (EC) No 816/2006 of the European Parliament and of the Council of 17 May 2006 on compulsory licensing of patents relating to the manufacture of pharmaceutical products for export to countries with public health problems’.
  - The People’s Republic of China accepted the amendment on 28 November 2007 and incorporated the TRIPS Protocol in the 2009 version of its Patent Law.
  - The amendment of the TRIPS Agreement took effect on 23 January 2017 replacing the 2003 waiver for members who have accepted the amendment in accordance with the TRIPS Protocol.
  - Members who are yet to accept the amendment currently have until 31 December 2021 to do so (document WT/L/1081) and until then the 2003 waiver will apply to them.
- Australia and the TRIPS Amendment
  - Australia implemented the TRIPS Protocol in 2015 under the Intellectual Property Laws Amendment Act 2015 (Cth).
    - Effective on 25 August 2015
    - Chapter 12 Part 3, ss 136B – 136M.
    - Under these provisions, the Federal Court may make an order requiring the grant of a compulsory licence to exploit a patented pharmaceutical invention for manufacture and export to an eligible importing country.
    - The court may order a compulsory licence to be granted if the proposed use of the pharmaceutical product is to address a public health issue in the eligible importing country:
      - in a national emergency (or other extremely urgent circumstances); or
      - by the public non-commercial use of the product.
    - The order may be amended or revoked by another order of the court.
    - The patentee must be paid an agreed amount of remuneration, or an amount of remuneration determined by the court
Progress on access to medicines
- Progress on access to medicines
  - According to UNAIDS, ‘[g]lobal scale-up of antiretroviral therapy has been the primary contributor to a 48% decline in deaths from AIDS-related causes, from a peak of 1.9 million [1.7 million - 2.2 million] in 2005 to 1.0 million [830,000 - 1.2 million] in 2016. (Source: UNAIDS, Data 2017Links to an external site., page 4).
  - How has progress on access to medicines been achieved? Through human rights arguments? Or as a result of supererogatory acts? Or is it just a result of corporate social responsibility?
  - What are the alternatives/hindrances in making progress on access to medicines?
    - Countries could take the option to follow the lead of India and Brazil where in the past patents were not granted to pharmaceutical products and consequently a home grown generic industry could blossom where copying of pharmaceutical products was not infringing domestic patent laws.
    - Such an approach is only possible for least-developed countries until 2033 with the extension of the transition period under article 66.1 of the TRIPS Agreement for Least-Developed Country Members for Certain Obligations with Respect to Pharmaceutical Products (See WTO, Council for Trade-Related Aspects of Intellectual Property Rights, Extension of the Transition Period under Article 66.1 of the TRIPS Agreement for Least Developed Country Members for Certain Obligations with Respect to Pharmaceutical Products (WTO Doc No IP/C/73, 6 November 2015).
    - However, free trade agreements containing TRIPS plus provisions have required least-developed and developing countries to adopt stronger intellectual property protections and give up the right to exclude pharmaceutical products from patentability.
- COVID-19 and the new TRIPS Waiver
  - In 2020, we saw research laboratories around the world racing to develop a vaccine for COVID-19. In 2021, the issue of access to the variety of vaccines developed is constantly in the press. Initially the question was around the sharing of technology to hasten the development of vaccines and finding ways to ensure intellectual property rights don’t hinder access to that technology. The Open COVID Pledge was one such initiative. Other examples include C-TAP and COVAX.
  - Now that we have several different types of vaccines, all the subject of patent rights, the question has moved to accessing the vaccines in a timely and equitable manner. Clearly those that own the patent rights to the vaccines have the right to exploit their patents as they see fit - or do they? This brings us back to the issues of TRIPS flexibilities - in particular compulsory licensing:
    - ‘Even if patent ownership is in the hands of private companies, the state may still have the right to use them for its own purposes or in the case of emergencies. Many countries have specific laws to facilitate these arrangements.’
      - Natalie Stoianoff, ‘Whoever invents a coronavirus vaccine will control the patent – and, importantly, who gets to use it’, The Converstation, May 29, 2020.
  - What has transpired is ‘the phenomenon of COVID-19 ‘vaccine nationalism” whereby low to middle income countries are still trying to access supplies of the COVID-19 vaccines while high-income countries argue about reaching 80% full vaccination. Anticipating this problem, India and South Africa put forward a TRIPS Waiver proposal to the WTO on 2 October 2020: IP/C/W/699. Talks continued but there was opposition to this proposal which led to action in trying to persuade those countries in opposition to change their minds.
  - Thambisetty et al provided compelling arguments in favour of the limited waiver. Do you agree?
  - In any event, the 12th (WTO) Ministerial Conference (MC12) adoption of the TRIPS waiver on COVID-19 vaccines and began discussions on a possible extension to cover the production and supply of COVID-19 diagnostics and therapeutics.
Australian Pharmaceutical Patents Review
- Australian Pharmaceutical Patents Review
  - In 2012-2013, the Australian Government carried out a review of the pharmaceutical patents system. The Panel released the final Pharmaceutical Patents Review Report in 2013.
  - Focus of the Review
    - The Pharmaceutical Patents Review was established to review the effectiveness of the Australian patent system in providing timely access to affordable pharmaceuticals and medical treatments and supporting innovation. The review included a consideration of:
      - the pharmaceutical extension of term provisions introduced in 1998 granting patents for new formulations, methods and uses of known pharmaceuticals international intellectual property agreements and strategies for extending market exclusivity.
  - What are pharmaceutical patents?
    - For the purpose of the Review, the report defined ‘pharmaceutical patents’ as:
    - ‘a patent for a medicine or a patent that directly relates to a medicine. Pharmaceutical patents include (but are not limited to) active ingredients, new formulations and methods of use. For example:
      - a new active ingredient developed to treat a condition
      - a new way of formulating the medicine to provide some benefit, such as improving its absorption in the body
      - a new method of producing a medicine
      - a new use of the medicine in treating a different condition’
  - Why patents are problematic
    - According to the Review, pharmaceutical patents may be problematic for the following reasons:
      - High prices for life-saving medicines and therefore reduced access to medicines
      - Period of protection may actually reduce level of innovation.
      - Favours IP rich countries while disadvantaging industry in IP poor or IP importing nations
  - Draft Findings of the Review
    - Need for the Australian Government to be more strategic in negotiating international agreements – more attention to domestic IP interests.
    - Need to pay attention to “manufacture for export” of medicines – Australia’s generic manufacturers have lost billions of $
    - Data protection for biologics not to be extended beyond existing 5 years.
    - Government agencies need to work together to ensure optimal policy settings with regard to end users, innovation, industry and international implications
  - Key Recommendations
    - Reinforce strong IP rights enforcement but not have those rights so broadly defined as to impose costs on innovation and other activities – eg, manufacturing for export. Need for sound economic understanding of costs and benefits to Australia in international negotiations.
    - As an interim measure seek agreement from Patent Owners that generics can be manufactured for export.
    - Either replace the patent extension provisions with a subsidy for investment in R&D or only allow extension to patent life in major trading partners.
    - Not broaden the scope of extension to methods of use and manufacture – continue to restrict to medicine and formulations.
    - Allow non-infringing use of medicine for non-patented indication purpose
    - Establish an external patent oversight committee to review grants and decisions of IP Australia and audit the decision-making process.
    - Government to take a more active role in managing the Pharmaceutical Benefits Scheme.
    - Transparency register to be established between therapeutic goods register and related patents.
    - Establish Non-Statutory Pharmaceutical System Co-ordinating Committee to annually report to Parliament on success and effectiveness of the patent, marketing approval and PBS systems and where they interface.
    - Introduce an objects clause to the Patents Act 1990 to include:
      - further Australia’s national interest and enhance the well-being of Australians, including by providing reasonable access to healthcare; and
      - provide strong, targeted IP protection - but only up to the point at which the costs (to consumers and the impediment of ‘follow on innovation’) are no greater than the benefits of incentivising innovation that would otherwise not occur.
Trade Marks and the Right to Health
- Trade Marks and the Right to Health
  - The case of plain-packaging and tobacco
    - The intersection between intellectual property rights and the human right to health is not limited to patent rights and pharmaceutical products. The recent introduction of legislation regulating tobacco packaging provides another example of where intellectual property rights, in the form of trade marks, may conflict with public health objectives.
    - Australia introduced plain-packaging legislation in 2011 to achieve public health objectives of discouraging smoking and reducing exposure to tobacco products. Section 3(2) of the Tobacco Plain Packaging Act 2011 (Cth) explicitly states that such public health objectives may be achieved by regulating packaging in such a way to: ‘(a) reduce the appeal of tobacco products to consumers; and (b) increase the effectiveness of health warnings on the retail packaging of tobacco products; and (c) reduce the ability of the retail packaging of tobacco products to mislead consumers about the harmful effects of smoking or using tobacco products.’
    - The Tobacco Plain Packaging Act 2011 (Cth) regulates the packaging for tobacco products and requires, among other things, the colour of packaging and the size of public health warnings. Critically, the legislation prohibits the display of trade marks on tobacco retail packaging. Section 20 states:
      - (1) No trade mark may appear anywhere on the retail packaging of tobacco products, other than as permitted by subsection (3).
      - (2) No mark may appear anywhere on the retail packaging of tobacco products, other than as permitted by subsection (3).
      - (3) The following may appear on the retail packaging of tobacco products:
        
        (a) the brand, business or company name for the tobacco products, and any variant name for the tobacco products;
        
        (b) the relevant legislative requirements;
        
        (c) any other trade mark or mark permitted by the regulations.
      - (4) This section does not apply to a plastic or other wrapper that covers:
        
        (a) the retail packaging of tobacco products; or
        
        (b) a tobacco product that is for retail sale.
    - Section 21 regulates where, how and how many times the brand, business name or company name may appear on tobacco packaging.
- Tobacco Company Response
  - A number of arguments have been raised by tobacco companies in response to the plain packaging legislation. These include: constitutional challenges to the right of the Australian government to implement such legislation; claims that such legislation is contrary to bilateral and multilateral trade agreements; and the potential for plain packaging legislation to drive trade in illicit tobacco products. There are also concerns about the potential ‘domino effect’ of such an approach.
- Australian Constitutional Challenges
  - JT International SA v Commonwealth of Australia; British American Tobacco Australasia Limited and Ors v Commonwealth of Australia [2012] HCA 43
    - In these cases, tobacco companies challenged the validity of the Tobacco Plain Packaging Act 2011 (Cth). They claimed that, by virtue of the Tobacco Plain Packaging Act 2011 (Cth), the Commonwealth Government had acquired property (that is, intellectual property rights and goodwill) contrary to section 51(xxxi) of the Australian Constitution. This particular provision of the Constitution requires that where the Government acquires property as a result of a Commonwealth law it must do so on just terms.
      - (xxxi) the acquisition of property on just terms from any State or person for any purpose in respect of which the Parliament has power to make laws;
    - The High Court of Australia held that the Commonwealth did not ‘acquire property’ as it did not obtain any proprietary interest or benefit and therefore section 51(xxxi) of the Constitution does not apply.
- Bilateral Investment Treaty Dispute
  - In this case, the tobacco company Philip Morris Asia challenged the Tobacco Plain Packaging Act 2011 through an investor-state dispute under the Agreement between the Government of Australia and the Government of Hong Kong for the Promotion and Protection of Investments 1993. The dispute was heard by three arbitrators who ruled in favour of Australia, finding that the claim made by Philip Morris Asia was an abuse of process. This was because Philip Morris Asia acquired Philip Morris (Australia) Limited for the purpose of bringing the claim against Australia under the Australia-Hong Kong trade agreement.
  - The arbitrators stated in the Award on Jurisdiction and Admissibility (17 December 2015) at [588]
    - the initiation of this arbitration constitutes an abuse of rights, as the corporate restructuring by which the Claimant acquired the Australian subsidiaries occurred at a time when there was a reasonable prospect that the dispute would materialise and as it was carried out for the principal, if not sole, purpose of gaining Treaty protection. Accordingly, the claims raised in this arbitration are inadmissible and the Tribunal is precluded from exercising jurisdiction over this dispute.
  - You can view more information on the Philip Morris Asia v Commonwealth of Australia dispute on the Permanent Court of Arbitration website
- World Trade Organisation Disputes
  - Tobacco companies have also funded five disputes under the World Trade Organisation dispute settlement mechanism:
    - Australia — Certain Measures Concerning Trademarks, and Other Plain Packaging Requirements Applicable to Tobacco Products and Packaging (DS434)
    - Australia — Certain Measures Concerning Trademarks, Geographical Indications and Other Plain Packaging Requirements Applicable to Tobacco Products and Packaging (DS435, DS441, DS458 and DS467)
  - The complaints were bought by Ukraine (DS434), Honduras (DS435), the Dominican Republic (DS441), Cuba (DS458) and Indonesia (DS467).
  - One of the key considerations in these claims is whether the actions taken by Australia is consistent with the provisions of the TRIPS Agreement. Article 20 states that
    - The use of a trademark in the course of trade shall not be unjustifiably encumbered by special requirements, such as use with another trademark, use in a special form or use in a manner detrimental to its capability to distinguish the goods or services of one undertaking from those of other undertakings. This will not preclude a requirement prescribing the use of the trademark identifying the undertaking producing the goods or services along with, but without linking it to, the trademark distinguishing the specific goods or services in question of that undertaking.
  - The World Trade Organisation have ruled in favour of Australia noting the importance of the underlying health objectives of the legislation however appeals have been lodged. You can view more information on the WTO Disputes on the DFAT website, , WTO Disputes - Tobacco Plain Packaging.

Week 7: Digital convergence

Digital creativity and culture reimagined
- former WIPO Director General Gurry says industry changes due to digital technology offer numerous creative, cultural and economic opportunities. However, it is important to ensure there is a balance between rewarding creators and innovators and providing access to content.
The knowledge economy
- We are all digital now
  - At the risk of stating the obvious, the Internet and the digital market place provides multiple modes of delivery of copyright material. Knowledge is power and it is easier than ever to access knowledge from all over the globe.
  - There are two key aspects to consider for the purpose of this topic:
    - The contribution of intellectual property rights to the economy
    - The impact of the digital environment and piracy on the economy
- Knowledge Economy
  - According to Chen and Dahlman, a knowledge economy is ‘one that utilizes knowledge as the key engine of economic growth. It is an economy where knowledge is acquired, created, disseminated and used effectively to enhance economic development.’ (see page 4) The World Bank has defined ‘four pillars’ of a knowledge economy as follows (see Chen and Dahlman at page 4):
    - an educated, creative and skilled labour force
    - an effective national innovation system
    - a modern and developed information infrastructure,
    - an economic and institutional regime that provides good economic policies and incentives for creators and innovators (including adequate protection and enforcement of intellectual property rights)
Economic contributions of copyright
- Economic contributions of copyright
  - Copyright makes a huge economic contribution to creative industries and these industries in turn make a large contribution to the overall economy. In addition to the creators of copyright material, there are interdependent copyright industries – those that facilitate and support the creation and distribution of works - such as manufacturers of instruments and recording equipment, computers, televisions, even suppliers of paper.
  - Need convincing? Take a look at this 2012 graphic of the copyright industry’s share of each country’s GDP and employment (image: WIPO).
  - In 2014, the World Intellectual Property Organisation released a report on the Economic Contribution of Copyright IndustriesLinks to an external site. and found that the average contribution of the copyright industries to GDP is 5.18% and the average contribution to employment is 5.32%.
  - You can view country specific data on the Economic Contribution of Copyright Industries on the WIPO website The Economic Performance of Copyright-Based IndustriesLinks to an external site.. A most recent study on the economic contribution of Copyright to the Australian economy can be found here
The WIPO Internet Treaties
- Internet Treaties
  - WIPO internet treaties
  - Recognition that TRIPS did not adequately deal with the problems posed by the internet, WIPO held the Dec 1996 International Conference in its headquarters resulting in:
    - WIPO Copyright Treaty (WCT)
    - WIPO Performances and Phonograms Treaty (WPPT
- WIPO Copyright Treaty
  - WCT
    - Builds on Berne
    - Article 1
    - the treaty is a ‘special agreement within the meaning of Article 20 of the Berne Convention’ and that
    - the treaty ‘shall not have any connection with treaties other than the Berne Convention, nor shall it prejudice any rights and obligations under any other treaties’.
    - Protects computer programs and compilations of data, namely, databases but doesn’t extend to the content itself.
  - WCT-3 exclusive rights-overkill?
    - Article 6 of the treaty establishes a ‘right of distribution’, entitling authors to ‘authorize the making available to the public of the original and copies of their works through sale or other transfer of ownership,’ and leaves treaty members free to create a first sale doctrine for the right.
    - Article 7 establishes a ‘right of rental’, entitling authors of sound recordings and computer programs to authorize or prohibit ‘commercial rental to the public of the original and copies of their works’.
    - Article 8 introduced a new designation - the ‘right of making available to the public’ (right of communication to the public).
  - WCT dealing with the internet
    - Rights to protect:
    - technological protection measures (TPMs) and
    - rights management information (RMI)
  - TPMs
    - Article 11 requires members to provide legal remedies against circumvention of effective technological measures used to protect works
  - RMIs
    - Article 12
    - Members must provide adequate legal protection against the removal or alteration of rights management information that identifies the attribution or ownership of works and is used to facilitate the exercise and management of the copyright holder’s rights.
  - Limitations or exceptions
    - Protection can be limited under Article 10 provided there is no conflict with the normal exploitation of the works
    - Safe Harbour exemption for internet service providers established under Article 8: authorisation
- WIPO (WPPT)
  - WPPT
    - Builds on Rome Convention
    - The WPPT grants producers of phonograms and performers whose performances are fixed in phonograms a broad ‘reproduction right’ to ‘authorize direct or indirect reproduction of the phonogram in any manner or form’, including digital form.
  - New rights
    - Similar to those in the WCT – 3 exclusive rights and legal protection for TPMs & RMIs
    - In addition confirmed following rights to protect performers:
      - Moral rights
      - Economic rights in unfixed performances
      - Right to make fixed performances available
ISP Safe Harbour Regimes
- ISP Safe Harbour Regimes
  - Internet Service Providers, or ISPs, provide the means by which users can access online material and potentially engage in infringing behaviour. The question then becomes: are the ISPs liable for the infringing activities of their users? Are the ISPs in effect ‘authorising’ the breach of copyright? What if the ISP is aware of the infringing activity?
  - In order to avoid claims that they are authorising infringing activities, ISPs have had to implement procedures to deal with situations where they become aware of infringing activities. Safe harbour regimes have been implemented in certain jurisdictions which protect ISPs from liability for the activities of their users provided they take certain steps to take down infringing material.
  - Safe harbour regimes have been established in a number of jurisdictions around the world such as the United States of America, the European Union and Japan and these rules have been disseminated as a result of free trade agreements requiring other countries to adopt safe harbour schemes.
  - Australia was required under the terms of the Australia - US Free Trade Agreement to implement safe harbour provisions and, accordingly, a safe harbour regime was established in 2006 under amendments to the Copyright Act 1968. The safe harbour regime covers ‘carriage service providers’ as defined under the Telecommunications Act 1997.
  - Carriage service providers are defined in section 87 of the Telecommunications Act as ‘…a person that supplies a listed carriage service to the public using a network unit owned by one or more carriers, or a network unit that has a nominated carrier declaration.’ What this means that the safe harbour provisions cover the activities of telecommunications providers and internet service providers.
  - Section 116AA of the Copyright Act 1968 provides
    - (1) The purpose of this Division is to limit the remedies that are available against carriage service providers for infringements of copyright that relate to the carrying out of certain online activities by carriage service providers. A carriage service provider must satisfy certain conditions to take advantage of the limitations.
  - There are a number of conditions that must be satisfied in order to qualify for protection under the safe harbour regime. These conditions are set out in section 116AH and include
    - ‘The carriage service provider must adopt and reasonably implement a policy that provides for termination, in appropriate circumstances, of the accounts of repeat infringers.
    - If there is a relevant industry code in force—the carriage service provider must comply with the relevant provisions of that code relating to accommodating and not interfering with standard technical measures used to protect and identify copyright material.
    - Any transmission of copyright material in carrying out this activity must be initiated by or at the direction of a person other than the carriage service provider.
    - The carriage service provider must not make substantive modifications to copyright material transmitted. This does not apply to modifications made as part of a technical process.’
  - There have been recent debates as to whether safe harbour regimes should extend to cover other online service providers such as cloud storage providers or streaming services. The Australian Government introduced legislation to amend the existing category: see the Copyright Amendment (Service Providers) Act 2018. For other recent copyright reforms see the Federal Government’s website
Are Australians digital pirates of the new millennium?
- Are Australians digital pirates of the new millennium?
  - All jokes aside, the statistics around Australian piracy are staggering, despite the provisions of the Copyright Act 1968 and subsequent amendments introduced following the WIPO Internet Treaties and the Australia - US Free Trade Agreement.
  - In 2015, market research firm TNS Australia interviewed 2630 people and estimated that a quarter of Australian internet users aged 12+ consumed at least one item of online content illegally over the first 3 months of 2015 (26%, equating to approximately 5.2 million people)!! Around a quarter of these (7% of total) exclusively consumed illegal content.
  - Take a look at what the research says: https://apo.org.au/sites/default/files/resource-files/2015-07/apo-nid56130.pdf
- Legislative approaches
  - Australia is under pressure from other countries to address its levels of online copyright infringement – think of the recent court actions in relation to the film ‘Dallas Buyers Club’ ( for example see Dallas Buyers Club LLC v iiNet Limited (No 4) [2015] FCA 838. Further on the obligations of ISPs see the earlier case, Roadshow Films Pty Ltd v iiNet Limited [2012] HCA 16).
  - Amendments to the Copyright Act 1968 were introduced to allow copyright holders to seek an injunction from the Federal Court to require ISPs to block access to overseas websites where the primary purpose of the website is ‘to infringe, or to facilitate the infringement of, copyright (whether or not in Australia).’ (see section 115A). In granting such an injunction, the court must take into account factors such as:
    - the flagrancy of the infringement
    - whether the website ‘makes available or contains directories, indexes or categories of the means to infringe, or facilitate an infringement of, copyright’
    - the level of disregard for copyright demonstrated by the owner or operator of the website
    - whether any other courts have granted orders to restrict or disable access to the website on the grounds of copyright infringement
whether blocking access to the website is a ‘proportionate response in the circumstances’
the potential impact on persons likely to be impacted by the granting of the injunction
whether blocking access to the website is in the public interest
whether the owner of the copyright complied with provisions set out in section 115A(4)
other relevant matter including matter prescribed in the regulations
- (See section 115A(5) of the Copyright Act 1968)
- A recent court case considered the operation of section 115A and required ISPs to block access to 57 international websites. See Roadshow Films Pty Ltd v Telstra Corporation Limited [2017] FCA 965.
- See also Maze Ford and Louise Hall, ‘Australia’s biggest telcos ordered to block international pirate websites by Federal Court’ ABC News (online) 18 August 2017
- Australian Law Reform Commission
  - The Australian Law Reform Commission (ALRC) report on ‘Copyright and the Digital Economy’ seeks to address concerns that existing defences to copyright infringement are not consistent with technological advances. Take for example, Larrikin Music Publishing Ltd v EMI Songs Australia Pty Ltd [2010] FCAFC 47 which highlighted the absence of defence for quotation. The ALRC report has a proposal for a principled fair use exception to provide greater flexibility for non-infringing use of copyright material in certain circumstances. The proposed fair use exception would replace the existing limited fair dealing provisions. The Productivity Commission in the 2016 Inquiry Report on IP Arrangements also supported the introduction of a fair use exception however the Australian Government is engaging in further consultation and review before making a decision.
  - You will find the report on the ALRC site under publications.
  - The latest consultation on Copyright Modernisation appears to be directed towards maintaining inflexible exceptions.

Law School Notes Repository

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Global Aspects of Intellectual Property Law notes

Cheat Sheet

Week 1: Globalisation of Intellectual Property (IP)

Notes

Week 1: Globalisation of Intellectual Property (IP)

Week 2: History and theoretical development of Intellectual Property Rights (IPR)

Week 3: International conventions and agreements

Week 4: IP and development: the case of China

Week 5: Biodiversity and IPR

Week 6: IP and Health

Week 7: Digital convergence

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